Details:
Ex parte Pyka
Appeal 2010005667; Appl. 11/025,686; Tech. Center 2100
Decided: Dec. 31, 2012
The application on appeal was directed to computer searching using global agreed-upon data structures. A representative claim on appeal read:
14. A computer program product tangibly embodied in an information carrier, the computer program product comprising instructions that, when executed, cause at least one processor to perform operations comprising:
...
wherein the request broker is configured to receive the search request and to transmit the search request to one or more non-local servers for execution of the search request; and
wherein the standardized data structure is a globally agreed-upon data structure.
(Emphasis added.)
During prosecution, the Examiner rejected claim 14 under § 101 as being directed to non-statutory subject matter. Based on a particular paragraph in the specification, the Examiner noted that "Appellant intends the information carrier to include signals as such the claim is drawn to a form of energy." However, the Examiner further noted that "energy is not one of the four categories of invention."
In response, the Applicant amended the specification to delete the sentence upon which the § 101 rejection was based: "Optionally, further carriers and further signals embody computer program products (CPP) to be executed by further processors in computer 901 and 902." In the Remarks section, the Applicant stated that the amendment overcame the rejection "by narrowing the scope of the claim to statutory subject matter."
In a Final Office Action, the Examiner maintained the § 101 rejection and added an objection to the specification, alleging that the amendment by deletion introduced new matter.
The Applicant appealed the § 101 rejection and various prior art rejections. In the Appeal Brief, the Applicant first addressed the new matter objection. According to the Applicant, "a change does not equate to an addition" and "narrowing a specification's disclosure by deleting material is .... the antithesis of adding matter." Turning to the § 101 rejection, the Applicant argued that claims should be interpreted in light of the amended specification; without the carriers and signals language in the specification, the claim was statutory.
The Examiner elaborated on his reasoning in the Answer:
The question here is given Appellant's specification would one of ordinary skill in the art interpret "information carrier" to include signals which are not statutory subject matter. The deletion of the phrase does not change what is meant by "information carrier". Appellant's specification states "Generally, carrier 970 is an article of manufacture having a computer-readable medium with computer-readable program code to cause the computer to perform methods of the present invention. Further, signal 980 can also include computer program product." Given this statement information carrier is would generally (most of the time) be a computer readable medium (as defined on pages 11 and 12 of the specification). However, an information carrier could also include the signal that holds the computer program product as stated.
The Applicant filed a Reply Brief. After noting that "removing material from the specification is specifically permitted by the [C.F.R.]", the Applicant explained that the Examiner's insistence that only originally filed matter be considered led to nonsensical results.
For example, if the reasoning in the Examiner's Answer were applied to the interpretation of claims, then the claims as originally-filed would indicate an intention on the part of an applicant to broadly claim his or her invention, any amendments to those claims would not and could not overcome that original intention, and the amended claims might never be allowed based solely on the original claiming intention of an applicant. The Appellant respectfully submits that this simply cannot be what the Patent statute and the rules of the Patent Office dictate ...The Board reversed the § 101 rejection. The Board first noted that In re Nuijten required a rejection under § 101 "when the broadest reasonable interpretation of a claim covers a signal per se." However, the broadest reasonable interpretation should take into account the specification amendment that removed the "carriers and signals" sentence.
Thus, the broadest reasonable interpretation of claim 14's preamble ("[a] computer program product tangibly embodied in an information carrier") only covers a computer program product embodied in physical media (i.e., a nontransitory tangible media). When the scope of the claim language is considered in light of Appellants' amended Specification, we conclude that the claimed "tangibly embodied in an information carrier" means "materially or physically" embodied in a physical media (non-transitory tangible media), and not embodied in non-physical media (transitory propagating signals).My two cents: Not sure why the Applicant deleted from the spec rather than amended the claim to add "non-transitory." The appeal was filed back in 2009, and I don't think adding "non-transitory" was in vogue back then like it is now.
I've seen many Board decisions that affirmed § 101 rejections when the spec was silent about signals, so it's interesting that the Board used the absence of signals in the amended spec to reverse the rejection. The PTO's current position is that silence in the spec about signals and computer readable media means signals are covered:
The broadest reasonable interpretation of a claim drawn to a computer readable medium (also called machine readable medium and other such variations) typically covers forms of non-transitory tangible media and transitory propagating signals per se in view of the ordinary and customary meaning of computer readable media, particularly when the specification is silent.Says who? How did the PTO decide that the ordinary and customary meaning of CRM covers signals?
(PTO 2010 Memo "Subject Matter Eligibility of Computer Readable Media.")
The Applicant's blanket statement that deleting from the spec can't possibly be new matter ignored Federal Circuit precedent. When the Appeal Brief was filed in 2009, the controlling law was Baldwin Graphic Systems, Inc. v. Siebert, Inc., 512 F.3d 1338, 1344 (Fed. Cir. 2008). In Baldwin, the Federal Circuit held:
The examiner rightly refused to allow the applicants to amend the specification to remove references to `heat' as the way of sealing the sleeve," for the change "would have broadened the patent and introduced impermissible new matter" and rendered the reissue claims "invalid for lack of support in the initial disclosure."The Federal Circuit reiterated this position more recently in Anascape, Ltd. v. Nintendo of America, Inc., 601 F. 3d 1333 (Fed. Cir. 2010).
ReplyDeleteWow … another example of all-around incompetence.
In no particular order, the specification should have never been amended. I have had discussions with my clients regarding this (and they agree), you cannot amend the specification in an attempt to "redefine" the meaning of term/phrase. This constitutes new matter, as correctly noted by Karen. I've had Examiners request that certain language be deleted from the specification, and I always tell them that there is no requirement to do so (the claims define the scope of the claim language – not the specification) and refuse to do so.
The PTAB's decision (Courtney is not one of my favorite APJs either, but nowhere near as bad as Dang) to reverse the 101 rejection is probably wrong. The PTAB writes "we conclude that the claimed 'tangibly embodied in an information carrier' means 'materially or physically' embodied in a physical media (non-transitory tangible media), and not embodied in non-physical media (transitory propagating signals)." This is wrong. BTW, as is typical with the PTAB, their conclusory "claim construction" is entirely unsupported by any analysis.
Rightly or wrongly, within In re Nuitjen, the Federal Circuit dismissed the tangibility of a signal as being not dispositive as to whether it meets 35 USC 101. Thus, based upon Nuitjen, the recitation of "tangibly" within "tangibly embodied" should not save the claim. Turning to the "information carrier," this is actually WORSE than computer readable medium. Contrary to popular belief among the USPTO, a signal is not a medium. However, a signal is an example of an information carrier. Thus, the BRI of an information carrier encompasses a signal per se.
Another point – the deletion of language within the specification should not make a difference as to the BRI of the claim language. The only exception would be if the specification redefined the term (in a manner inconsistent with the art) to make it broader. I don't see that being the case here. If I write "fasteners include nails, screws, and rivets" and I subsequently delete the "and rivets" portion, the BRI of "fastener" still includes rivets. Here, the Examiner (within the Examiner's Answer) got it right when he/she wrote "[t]he deletion of the phrase does not change what is meant by 'information carrier.'"
"I don't think adding 'non-transitory' was in vogue back then like it is now"
It only became "in vogue" after the Kappos Memo, which was issued in January of 2010 and specifically mention the phrase "non-transitory" as being a way to get around a 101 rejection.
"Says who? How did the PTO decide that the ordinary and customary meaning of CRM covers signals?"
You nailed it here. The Kappos Memo got it wrong. A medium is not a signal per se. Signals propagate through a transmission medium or are stored within a storage medium. However, a signal is not a medium – they are distinct entities. Additionally, a point lost on many APJs/Examiners is that the language must cover a signal per se – merely covering a signal is not enough. A typical computer memory chip (clearly statutory subject matter under 35 USC 101) includes signals running through it during operation. However, the presence of those signals with the computer memory chip does not render the chip unpatentable.
"Says who? How did the PTO decide that the ordinary and customary meaning of CRM covers signals?"
ReplyDeleteDetermined in view of the thousands of patent applications that say computer readable media can be embodied as signals. Many also say that a computer "storage" medium can be embodied as a signal.
BTW ... while I'm thinking of it. Can you find me a technical defintion of the term "medium" that supports your contention that a transitory, propagating signal per se is a species of the genus "medium."
DeleteLet's see, the following language is taken from this link http://en.wikipedia.org/wiki/Wave_propagation_speed
Delete"The velocity factor (VF),[1] also called wave propagation speed or velocity of propagation (VoP or ),[2] of a transmission medium is the speed at which a wavefront (of an acoustic signal, for example, or an electromagnetic signal, a radio signal, a light pulse in a fibre channel or a change of the electrical voltage on a copper wire) passes through the medium, relative to the speed of light. For optical signals, the velocity factor is the reciprocal of the refractive index."
From this passage, it appears that those skilled in the art treat a transmission medium and a signal as being different. This doesn't comport with the proposed definition of a medium being a transitory, propagating signal per se. Any explanations?
Another discussion can be found here http://en.wikipedia.org/wiki/Transmission_medium
DeleteLet's see what it says about medium and signals. Hmmm ... this article also appears to imply that a transmission medium is different than a signal (e.g., "the medium is carrying signals in both directions at same time," "Copper wire to carry signals to long distances using relatively low amounts of power," "A physical medium in data communications is the transmission path over which a signal propagates.")
This doesn't look good for the USPTO's interpretation.
>Determined in view of the thousands of patent applications
Delete>that say computer readable media can be embodied as signals.
Ah. See, I was thinking that it should depend on whether actual persons who work with the technology think the term CRM encompasses a signal.
Come to think of it, maybe these actual persons don't even use the term "computer readable medium". Maybe that term was coined by a patent drafter too.
The term "computer readable medium" may have been coined by a patent drafter, but the terms medium, transmission medium, and storage medium are used out there in the real world.
Delete>medium, transmission medium, and storage medium
Delete>are used out there in the real world.
Agreed. I didn't mean to suggest a real person in the art wouldn't *understand* the term CRM ... just that they might not have heard of it.
But I maintain my position that a real person in the art would *not* understand CRM - once they figured out what it meant - to encompass signals.
"I maintain my position that a real person in the art would *not* understand CRM - once they figured out what it meant - to encompass signals"
DeleteI agree completely. Those in the art treat such language as medium (i.e., transmission medium and storage medium) and signal differently. Unlike the USPTO, which doesn't have a problem muddying up language, those skilled in the art NEED to have a common reference point to work with in which different terms have different meanings.
Where the USPTO gets into trouble is by relying upon attorney boilerplate and not the actual teachings of those skilled in the art.
"But I maintain my position that a real person in the art would *not* understand CRM - once they figured out what it meant - to encompass signals."
DeleteWhaa?? "once they figured out what it meant" ? what have you concluded that it means? based on what evidence? what "real person" in particular ? and which art in particular?
I'm reading your note on my computer screen. The text came to my computer encoded in a propagated transient signal from a distant server to my CPU. I conclude that my computer reads transitory signals just fine. A propagated transient signal is thus a computer readable medium. Ask a "real person" in any network-related art.
"based on what evidence?"
DeleteDid you read any of the links found above?
"Ask a 'real person' in any network-related art."
Signals aren't a "medium" -- either a transmission medium or a storage medium. Signals are transmitted over a transmission medium and are stored via the use of a storage medium.
Regardless, I'm sure you can find me lots of literature (that is not attorney boilerplate in a patent application) that supports your position. I'll be waiting for your links ... but I won't be holding my breath.
"Did you read any of the links found above?"
DeleteWikipedia? No, I did not.
A wireless signal is not a transmission medium? How so? It is where I live.
"A wireless signal is not a transmission medium? How so? It is where I live."
DeleteI'm sure you can find something that says that then ... again, I'll be waiting for your links.
In the meantime, I'll give you some things to review. http://www.di.unisa.it/~vitsca/RC-0809I/ch04.pdf
"The transmission media that are used to convey information can be classified as guided or unguided. Guided media provide a physical path along which the signals are propagated; these include twisted pair, coaxial cable, and optical fiber."
"In a data transmission system, the transmission medium is the physical path between transmitter and receiver."
"The characteristics and quality of a data transmission are determined both by the characteristics of the medium and the characteristics of the signal."
http://www.mhprofessional.com/downloads/products/0071701222/0071701222_chap01.pdf
"These signals are usually delivered from the provider via twisted-pair or coaxial cables."
"Fiber optics constitutes the third transmission medium."
http://www.calstatela.edu/faculty/sxing/courses/sum2011/cis454/lect/cis454_SUM11_lect4_rev0_4p.pdf
"Both analog and digital signals may be transmitted on suitable transmission media."
"Transmission Medium -- Physical path between transmitter and receiver -- Classified as guided or unguided"
"Some transmission media will only propagate analog signals, e.g., optical fiber and unguided media"
"the medium is really the atmosphere (free space) for wireless communications."
"Any electromagnetic signal can be shown to consist of a collection of periodic analog signals at different amplitudes, frequencies, and phases."
http://www.uncg.edu/cmp/faculty/j_deng/papers/jack_globecom08.pdf
"One of the main differences between wireline and wireless computer networks is the transmission medium. Rather than keeping signal within cables, wireless communication transceivers use open media."
As can be seen from these references, a signal propagates along a transmission medium. They are different entities.
It took about twenty seconds to find a "real person" referring to radio waves as a transmission medium. I'm not spending any more time on it. I'm done. Because when there are competing definitions, guess which one wins under BRI? Hint: the answer is in the "B."
Deletehttp://www.bbwexchange.com/turnkey/howrfworks_page_7.asp
An interesting portion is the following language:
Delete"While each type of cable (coaxial, thin coaxial, and unshielded twisted pair) has its own electrical properties, there is a commonality in how the electrical signals are transmitted from one network card to another using these media."
Note the part that "the electrical signals are transmitted ... using these media," with these media refers to the different types of cables. Here, the author distinguishes between the signal and the media.
"Because when there are competing definitions, guess which one wins under BRI?"
At the USPTO, I understand. However, in the real world, people try to figure out who is right and who is wrong when faced with inconsistent language. That is the "R" part of BRI.
In case you didn't know it, many people use terminology (in all walks of life) incorrectly. If I had a quarter for every time I heard somebody misstate the 1st Amendment of the US Constitution, I would be retired by now.
Finally, let's look at what they wrote that got your face flushed:
"However, when using fiber optic cable, which uses light waves as a medium, and radio signals, which use radio waves as a medium, the process is a bit more complex."
Unfortunately for you, despite its sloppy language, this article doesn't support what you want it to support. The ultimate question is does a medium encompasses a signal per se. What this passage says is that a radio/light waves are a medium, but that doesn't make your argument. The passage also says that the radio signals USE radio waves as a medium. The important part here is that this passage doesn't say that a radio signal IS a radio wave/medium – only that it USES them.
Page 3 of your article is entitled "Using Radio Waves to Carry Wireless Data Transmissions."
It seems to me that (despite the other sloppy language) this author does recognize there is a difference between the radio wave and the signal (i.e., the wireless data transmissions).
Ahhh ... the wonders of careful reading. I highly suggest it.
The error in this guy's writing is that a wave and a medium are not one in the same. He got confused as to the difference between a signal, a carrier wave, and a medium. In analog radio transmissions, the signal is modulated onto a carrier wave, which is transmitted through a medium. I suggest you look up the terms "wave" and "medium" … they are not the same. A wave propagates through a medium.
What a surprise! A "real person" refers to using radio signals as a data transmission medium and, although you do not work in the broadband wireless Internet art, the real person is wrong because the real person does not follow the single, narrow meaning that you want. Irrefutability rules!
DeleteFact is, the information I want comes to me through the medium of a propagating, transitory signal that my computer can read. I don't care about the details of the signal because it's the encoded text that I want to see.
There a lot of different "signals." You cite "analog radio transmissions." In AM modulation a carrier signal is processed such that its amplitude varies in accordance with the level of the modulating signal. The information content is in the modulating signal, and that's what a listener cares about. The carrier signal is a transmission medium for the modulating signal. More so than air because air is not necessary for either of the carrier or modulating signal.
I certainly do not disagree that a "transmission medium" can be defined as whatever makes up the physical path for a signal. Absolutely. Maybe even most often defined that way. But then there's that pesky "B."
"A 'real person' refers to using radio signals as a data transmission medium and, although you do not work in the broadband wireless Internet art, the real person is wrong because the real person does not follow the single, narrow meaning that you want."
DeleteYou mean one person confuses a wave with a medium and you ignore all my all cites. How convenient … just like the USPTO – turn a blind eye to evidence because it doesn't fit what they want.
"the information I want comes to me through the medium of a propagating, transitory signal"
But that is not what your "reference" stated. It said that the wave is the medium and the signal uses the wave.
"The carrier signal is a transmission medium for the modulating signal. More so than air because air is not necessary for either of the carrier or modulating signal."
It appears that have been confused by the terminology as well. The term "carrier signal" does not actually refer to a signal as we are describing a signal. The term "carrier signal" is a different way of saying "carrier wave." The data-carrying signal (also called a modulating signal) is modulated onto the carrier wave. Whereas the modulating signal is considered transitory, the carrier wave is not. Regardless, there is a difference between the signal and the carrier wave.
You are saying that a carrier wave is the transmission medium. However, copper is also a transmission medium and carrier waves propagate through copper wire. How does a transmission medium propagate through a transmission medium? Except at the USPTO, that doesn't make sense. A wave propagates through a medium -- they are not one and the same. Google the terms "wave," "propagation" and "medium." You'll quickly discover the truth of that statement.
"But then there's that pesky 'B."
But then there is that pesky R that ignores sloppy descriptions that confuse terminology.
"The term 'carrier signal' does not actually refer to a signal as we are describing a signal."
DeleteOk. Now I get it.
"Nuijten and the PTO agree that the claims include physical but transitory forms of signal transmission such as radio broadcasts, electrical signals through a wire, and light pulses through a fiber-optic cable, so long as those transmissions convey information encoded in the manner disclosed and claimed by Nuijten. We hold that such transitory embodiments are not directed to statutory subject matter." In re Nuijten, 500 F.3d 1346, 1353 (Fed. Cir. 2007).
Delete"Whereas the modulating signal is considered transitory, the carrier wave is not."
Ok. Now I get it.
"Ok. Now I get it."
DeleteI would never believe that statement ... even if you parroted what I wrote.
Regardless, Nuitjen also confirms that there is a difference between a signal (e.g., electrical signals and light pulses) and a transmission medium (e.g., a wire, fiber-optic cable).
What you cannot explain is why those skilled in the art would use the same terminology to describe a copper wire as it would to describe a light pulse.
While you are looking at Nuitjen, check out footnote 6. Tell me what you think it means.
"Regardless, Nuitjen also confirms that there is a difference between a signal (e.g., electrical signals and light pulses) and a transmission medium (e.g., a wire, fiber-optic cable."
DeleteWhere?
And "those skilled in the art?" What art are you talking about, exactly?
"While you are looking at Nuitjen, check out footnote 6. Tell me what you think it means."
Footnote 6? Your opinion is based on footnotes?
From what I remember of the case, footnote 6 probably means that a magnetic disk, DVD , etc. is a non-transitory medium.
Karen raises a good point about the terms as used/understood by a person skilled in the art and those same terms as used/understood by a patent practitioner.
DeleteMany is the time I've heard an inventor use terms interchangeably when they actually mean different things. For example, speaking of signals, when a person skilled in the art uses the terms "packet" and "data" interchangeably.
"Determined in view of the thousands of patent applications that say computer readable media can be embodied as signals. Many also say that a computer 'storage' medium can be embodied as a signal."
ReplyDeleteReally? Do these patents say that the term computer readable media encompasses a transitory, propagating signal per se? If so, please provide some patent or patent publication numbers.
http://e-foia.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd2009013642-10-18-2012-1
ReplyDeleteI see nothing that says that a signal is a transitory, propagating signal per se. Instead, what I see is a lot of sloppily-written boilerplate language.
DeleteYou've got IDENTICAL language in an application to Oracle, Siemens, and Portal Software. What is up with that???? Obviously, this is boilerplate.
Claims are to be interpreted consistent with the meaning that those skilled in the art would reach -- not in view of (poorly written) attorney boilerplate. That's the problem with poor attorneys (both inside and outside the USPTO). Instead of researching an issue, they take the easy route and just copy from somebody else's work.
Also, after looking at a few of these applications, it appears that the disclosures are directed to software. For example, 20020143962 is directed to "coordinating protocol stacks for computer systems." 20110171948 is directed to processing events, such as billing, in real time. 20040255307 is directed to "providing requests for connections to a resource that implicitly utilize a connection cache." This is all software and has nothing to do with the differences between a medium (e.g., a transmission medium or storage medium) and signal.
Let's just take a look at the language for those 3 patent publications, which is identical: "a data signal embodied in a carrier wave (e.g., in a network including the Internet) can be the computer readable storage medium." First of all, even assuming this was accurate, this would not fall under Nuitjen. Nuitjen applies to a signal per se. Once you've added the carrier wave, you no longer have a signal per se. Also, storage cannot be transitory – if it was transitory it wouldn't be storage. However, a signal being transitory is a necessary requirement of Nuitjen.
I see nothing that says that a signal is a transitory, propagating signal per se. Instead, what I see is a lot of sloppily-written boilerplate language.
DeleteYou've got IDENTICAL language in an application to Oracle, Siemens, and Portal Software. What is up with that???? Obviously, this is boilerplate.
Claims are to be interpreted consistent with the meaning that those skilled in the art would reach -- not in view of (poorly written) attorney boilerplate. That's the problem with poor attorneys (both inside and outside the USPTO). Instead of researching an issue, they take the easy route and just copy from somebody else's work.
Also, after looking at a few of these applications, it appears that the disclosures are directed to software. For example, 20020143962 is directed to "coordinating protocol stacks for computer systems." 20110171948 is directed to processing events, such as billing, in real time. 20040255307 is directed to "providing requests for connections to a resource that implicitly utilize a connection cache." This is all software and has nothing to do with the differences between a medium (e.g., a transmission medium or storage medium) and signal.
Let's just take a look at the language for those 3 patent publications, which is identical: "a data signal embodied in a carrier wave (e.g., in a network including the Internet) can be the computer readable storage medium." First of all, even assuming this was accurate, this would not fall under Nuitjen. Nuitjen applies to a signal per se. Once you've added the carrier wave, you no longer have a signal per se. Also, storage cannot be transitory – if it was transitory it wouldn't be storage. However, a signal being transitory is a necessary requirement of Nuitjen.
An example of well-written boilerplate is from U.S. Patent No. 6,765,939. The field of the invention is "devices that emit electromagnetic radiation and, in particular, to wavelength monitoring and locking for a semiconductor laser." Thus, the inventors in this application necessary have to understand a transmission medium and a signal. In this patent they wrote:
Delete"The present invention can also be embodied in the form of computer program code embodied in tangible media, such as floppy diskettes, CD-ROMs, hard drives, or any other computer-readable storage medium, wherein, when the computer program code is loaded into and executed by a computer, the computer becomes an apparatus for practicing the invention. The present invention can also be embodied in the form of computer program code, for example, whether stored in a storage medium, loaded into and/or executed by a computer, or transmitted as a propagated computer data or other signal over some transmission or propagation medium, such as over electrical wiring or cabling, through fiber optics, or via electromagnetic radiation, or otherwise embodied in a carrier wave, wherein, when the computer program code is loaded into and executed by a computer, the computer becomes an apparatus for practicing the invention."
In this boilerplate, they correctly recognize the difference between a storage medium and a transmission medium. They also correctly recognize that a signal is propagated through/over a transmission medium. Hence, a signal per se is neither a storage medium nor a transmission medium.
There are thousands of applications that correctly recognize the differences between a signal per se and a storage and/or transmission medium. Considering that the language being relied upon by the USPTO is obviously boilerplate and there is inconsistent treatment of these terms within different patent applications, you would think that the USPTO would actually do a little research as to what these terms actually meant (i.e., how do those skilled in the art actually use those terms). Well … that would be wishful thinking. The USPTO has their agenda (reject computer readable medium claims under 35 USC 101) and they turn a blind eye to all other teachings inconsistent with their "world view."
"In this boilerplate, they correctly recognize the difference between a storage medium and a transmission medium. They also correctly recognize that a signal is propagated through/over a transmission medium. Hence, a signal per se is neither a storage medium nor a transmission medium."
DeleteBut, a signal that is propogated through/over a transmission medium is non-transitory and thus not statutory subject matter.
"The present invention can also be embodied in the form of computer program code, for example, whether . . . transmitted as a . . . signal, such as . . . via electromagnetic radiation, or otherwise embodied in a carrier wave. . . ."
Pardon my inadvertant dropping in the "non."
DeleteBut, a signal that is propogated through/over a transmission medium is TRANSITORY and thus not statutory subject matter.
"But, a signal that is propogated through/over a transmission medium is non-transitory and thus not statutory subject matter."
DeleteOK ... and your point is? A transitory, propagating signal per se is non-statutory pursuant to In re Nuitjen. I have no disagreement there.
"The present invention can also be embodied in the form of computer program code, for example, whether . . . transmitted as a . . . signal, such as . . . via electromagnetic radiation, or otherwise embodied in a carrier wave. . . ."
Are you one of those people that don't realize that the CLAIMS define the scope of the claimed invention -- not the specification? The fact that somebody writes "the present invention can be [some type of non-statutory subject matter]" doesn't mean that is what is being claimed. Claims are there for a purpose. Please don't ignore them.
"Are you one of those people that don't realize that the CLAIMS define the scope of the claimed invention -- not the specification?"
DeleteNo, I'm not one of those people, but the vast majority of posters here are.
My point was exactly what I said (on the second try). A signal that is propogated through/over a transmission medium is TRANSITORY and thus not statutory subject matter.
The specification examples would have no effect if the claims were not directed to a signal embodiment. However, the claim does not have to state "I claim a propagating, non-transitory signal comprising" to be directed to a non-transitory signal.
Beauregard claims are becoming anachronistic. The patent owners absolutely want claims that that cover signals (such as "program code" embodied in a transitory signal), because that is how the majority of software is distributed. But Nuitjen through a monkey wrench into the machinery.
"My point was exactly what I said (on the second try). A signal that is propogated through/over a transmission medium is TRANSITORY and thus not statutory subject matter."
DeleteAssuming that the claim is to the signal (without anything else), no one is arguing otherwise -- that's the holding of Nuitjen. So why are you making the point ... twice?
"However, the claim does not have to state 'I claim a propagating, non-transitory signal comprising' to be directed to a non-transitory signal."
Did you mean to say "transitory" instead of "non-transitory"? Regardless, to invokve Nuitjen, you cannot be claiming anything more than just the signal. I suggest you re-read Nuitjen. Focus on the claim language and what is actually being claimed. While you are at it, think about footnote 6 and tell me what you think it means.
"Beauregard claims are becoming anachronistic."
No ... if you've got a computer program that operates on a client device, you want to be able to go after the manufacturer (deeper pockets) for direct infringement, and you can do that with a Beauregard claim. Much harder to do if all you've got is method/machine claims.
"The patent owners absolutely want claims that that cover signals"
Uh no ... Nuitjen eliminated that possibility 5 years ago. Now, patent holders want to get claims to DVDs, CDs, memory, flash drives (i.e., storage medium) without jumping through the hoops that the USPTO throws out there.
Yes, pardon all the extraneous "nons." I shouldn't have been texting on my motorcycle.
DeleteI do not agree that a claim has to use the word "signal" to run afoul of Nuijten, because that's the way claim interpretation goes. The agency that grants patents agrees with my view, not yours, so go sell it there. According to Nuijten, a claim that is broad enough to cover statutory and non-statutory embodiments is non-statutory.
"Beauregard claims are becoming anachronistic.'
No ... if you've got a computer program that operates on a client device, you want to be able to go after the manufacturer (deeper pockets) for direct infringement, and you can do that with a Beauregard claim. Much harder to do if all you've got is method/machine claims."
I have to disagree with that premise, too. For example, a foreign company selling software downloaded over the Internet to U.S. customers is not directly infringing a Beauregard claim. The company is not making, using, offering to sell, or selling within the US, or importing into the US, a DVD, CD, memory, flash drive, etc. But transmission of the code would apply to a claim directed to a signal embodying the code.
That's a major reason why patent owners absolutely want claims that cover signals. But Nuijten threw the monkey wrench. Most of the boilerplate in specifications about broad coverage predates Nuijten, but much still goes in just in case Nuijten goes away.
"I do not agree that a claim has to use the word 'signal' to run afoul of Nuijten, because that's the way claim interpretation goes. The agency that grants patents agrees with my view, not yours, so go sell it there."
DeleteThe "agency" (i.e., the USPTO) doesn't interpret the law. I'm not particularly worried about what they think. It is the Federal Circuit that matters.
Regardless, give me some examples of claim language that covers a signal per se that doesn't recite a signal.
"I have to disagree with that premise, too. For example, a foreign company selling software downloaded over the Internet to U.S. customers is not directly infringing a Beauregard claim."
So .... what's your point???? US law still applies to activites in the US. In case you haven't realized it, there is a decent-sized software industry in the US.
"That's a major reason why patent owners absolutely want claims that cover signals. But Nuijten threw the monkey wrench."
So??? I want a claim that covers potato chips ... but that isn't going to happen either. Try sticking to reality with your comments.
"Most of the boilerplate in specifications about broad coverage predates Nuijten."
You should read my post below as to the origin of signal claims ... they were popularized by the USPTO.
I thought you understood what "direct infringement" meant since you used the term. Oh, well.
Delete"I want a claim that covers potato chips ... but that isn't going to happen either. Try sticking to reality with your comments."
US 7,482,033 --
1. A fabricated potato chip made from a dough, wherein said dough comprises potato flakes, and wherein said potato flakes comprise: (a) from about 40% to about 60% broken cells; (b) from about 16% to about 27% amylose; and (c) from about 5% to about 10% moisture; and wherein said potato flakes have a particle size distribution such that: (1) from 60% to about 70% remain on a #100 U.S. screen; (2) from 20% to about 40% remain on a #40 U.S. screen; (3) from about 1% to about 3% remain on a #20 U.S. screen; and (4) from 1% to about 3% remain on a #16 U.S. screen.
Hope you feel better.
"I thought you understood what 'direct infringement' meant since you used the term. Oh, well."
DeleteYou apparently do not. A method claim to "a computer program that operates on a client device," is not going to be infringed by the manufacturer. They might infringe it during testing, but we aren't talking about a lot of infringement. The same applies to a claim for a machine configured to perform the method. However, you do have a claim for direct infringment with a Beauregard claim because the program is stored within the server of the manufacturer/distributor. Also, even you distribute the program via a DVD (still popular), you've got that covered as well.
"US 7,482,033"
I said I wanted a claim to a potato chip ... not a potato chip "product." Also, its not my patent. So no, I do not feel better.
"However, you do have a claim for direct infringment with a Beauregard claim because the program is stored within the server of the manufacturer/distributor."
DeleteNot if the server is in China.
"Not if the server is in China."
DeleteWhat is it about "[i]n case you haven't realized it, there is a decent-sized software industry in the US" that you didn't understand? Even if the server is in China, where is the software made? Also, what is it about "even [if] you distribute the program via a DVD (still popular), you've got that covered as well" that you didn't understand?
There is a reason why applicants (in software claims) claim the same thing three different ways (method, machine, CRM) ... because no particular way is perfect.
"Even if the server is in China, where is the software made?"
DeleteCould be made in China.
"Could be made in China."
DeleteSo what???? Software could be made, distributed, and used in China as well ... does that mean I shouldn't get a patent in the US?
You get a US patent for activities happening in the US. Given extent of the US software industry, there WILL be infringing activities in the US. Beauregard claims can cover some of those activities that would be harder to go after with other types of claims. Why is that so hard to understand?
As best I can tell, your criticism of Beauregard claims is that they don't cover every possible type of infringement. However, I never said that they did.
"You get a US patent for activities happening in the US."
DeleteSuch as software from China downloaded over the Internet into the U.S.
"Such as software from China downloaded over the Internet into the U.S."
DeleteWow ... that sounds like a great idea. No worries about a few (hundred) backdoors to your computer system being slipped in there.
Regardless, did I write Beauregard claims covered everything? I don't think so.
Your original premise (i.e., "Beauregard claims are becoming anachronistic") implies that Beauregard claims will have no use whatsover. The fact that SOME software can be downloaded from China (now or in the future) doesn't mean that Beauregard claims have NO USE whatsoever either now or in the future.
"Your original premise (i.e., "Beauregard claims are becoming anachronistic") implies that Beauregard claims will have no use whatsover."
DeleteYou imply too much. There was a time when you could not download software from China. Now you can. Beauregard claims are becoming anachronistic.
I agree that Beauregard claims have some use now and will in the near future. Now go take your pill.
"I agree that Beauregard claims have some use now and will in the near future."
DeleteAhhh ... so there is a current and future use to them.
Yes, you have established that I do not disagree with something that I did not disgree with. I'm sure you'll get your potato chip claim someday, too.
DeleteWhat the USPTO forgets is that they are the ones that created this "signal claim" mess. An article describing the history of signal claims at the USPTO is found here: http://www.oblon.com/sites/default/files/news/315.pdf. The relevant discussion starts at page 7. In 1996, the USPTO provided training materials that listed an example claim that read "[a] computer data signal embodied in a carrier wave comprising a compression source code comprising [the code]; and an encryption source code segment comprising [the code]." The BPAI also issued a decision within Ex parte Rice (Appeal No. 2002-1554) that reversed a rejection of a signal claim under 35 USC 101. Thus, the USPTO blessed the use of signal claims.
ReplyDeleteWith this in mind, many practitioners started including signal claims within their claim sets. Additionally, practitioners also updated their boilerplate to include support for their signal claims. Unfortunately, this is where a lot of the sloppily-written boilerplate originated. Instead of attempting to understand the intrinsic nature of signal and properly characterize it, some sloppy (and/or unknowledgeable) practitioners just attached the enabling language to their preexisting computer readable medium boilerplate.
Now, to the detriment of the knowledgeable inventors/practitioners, we are stuck with the USPTO/PTAB relying upon poorly written boilerplate language that does not accurately reflect signals, transmission medium, storage medium, and the differences thereof.
FYI ... this is from MPEP 2106 (May 2004):
However, a signal claim directed to a practical application of electromagnetic energy is statutory regardless of its transitory nature. See O’Reilly, 56 U.S. at 114-19; In re Breslow, 616 F.2d 516, 519-21, 205 USPQ 221, 225-26 (CCPA 1980).
http://www.uspto.gov/web/offices/pac/mpep/old/E8R2_2100.pdf
Clear legal error at the board, who'da thunk it?
ReplyDeleteNot even Agent Kane woulda thunked that!
1) stupid grounds to waste ~2-3 years on
ReplyDelete2) pretty sure the removal of signals in spec the term would still encompass signals in claims
for chrissake, just make the silly "non-transitory" amendment or whatever silly wording the Office wants and move on
"for chrissake, just make the silly 'non-transitory' amendment or whatever silly wording the Office wants and move on"
DeleteAt least a couple of the large software companies do not like that language as the term "non-transitory" is nebulous.
Where does one draw the line between transitory and non-transitory?
Is information stored in a memory chip for a single clock-cycle transitory or non-transitory? Put differently, if the memory chip can store the information for only a single clock-cycle, is the memory chip considered non-transitory storage? There is an argument to be made that since the information can exist for such a short period of time within the memory chip, then it could be argued that it is "transitory." With that in mind, you don't want language that arguably excludes certain types of memory chips.
BTW -- I'm not saying that this argument would prevail, but it is an argument that could be made and you don't want to give the other side even a toe hold to make an argument of non-infringement.