Wednesday, February 29, 2012

Chkodrov and the abstract database

motion gears -team force
Ex Parte Chkodrov et al, No. 2009-012722 (BPAI Jan 25, 2012) involved monitoring a workflow of a business or other organisation. The invention related more particularly to viewing information about multiple instances of an activity and for maintaining that information.

Microsoft brought US Patent Application 10/670,276 before the Board of Patent Appeals and Interferences. The Examiner had rejected each of claims 1-46 as being directed to non-statutory subject matter.

Claim 1 as a representative claim read as follows:

1. A method for maintaining information regarding multiple instances of an activity, each instance having an active condition in which information about the instance is to be modified or an inactive condition in which information about the instance is not to be modified, the method comprising:
creating a record in a first database table for each of the multiple instances in the active condition, each record containing a field for each of a plurality of data types, one or more of the fields in each active instance record having a value indicative of the active condition;
assigning, for records of the multiple instances in the inactive condition, values to the one or more fields indicative of the inactive condition;
deleting from the first table records of instances having values in the one or more fields indicative of the inactive condition thereby reducing a size of the first database table to prevent degradation of response times when database users access the records for the instances in the active condition; and
creating, for records deleted from the first table, a corresponding record in a second database table.

Claim 23 read:
23. A computer-readable medium having stored thereon data representing sequences of instructions which, when executed by a processor, cause the processor to perform steps comprising:
creating a record in a first database table for each of multiple instances of an activity, wherein:
each instance has an active condition in which information about the instance is to be modified or an inactive condition in which information about the instance is not to be modified,
the first table records are created for instances in the active condition, and
each record of the first table contains a field for each of a plurality of data types, one or more of the fields in each active instance record having a value indicative of the active condition;
assigning, for records of the multiple instances in the inactive condition, values to the one or more fields indicative of the inactive condition;
deleting from the first table records of instances having values in the one or more fields indicative of the inactive condition thereby reducing a size of the first database table to prevent degradation of response times when database users access the records for the instances in the active condition; and
creating, for records deleted from the first table, a corresponding record in a second database table.

A further representative claim is claim 45, reading as follows:
45. A data processing apparatus for maintaining information regarding multiple instances of an activity, each instance having an active condition in which information about the instance is to be modified or an inactive condition in which information about the instance is not to be modified, comprising:
at least one data storage device;
at least one user input device; and
a processor operatively connected to said storage device and said user input device, wherein the at least one data storage device has stored thereon a set of instructions which, when executed, configure said processor to:
create a record in a first database table for each of the multiple instances in the active condition, each record containing a field for each of a plurality of data types, one or more of the fields in each active instance record having a value indicative of the active condition,
assign, for records of the multiple instances in the inactive condition, values to the one or more fields indicative of the inactive condition,
delete from the first table records of instances having values in the one or more fields indicative of the inactive condition thereby reducing a size of the first database table to prevent degradation of response times when database users access the records for the instances in the active condition, and
create, for records deleted from the first table, a corresponding record in a second database table.

The "can you do it in your mind" test

The Board looked first at claim 1. Citing CyberSource Corp. v. Retail Decisions, Inc. (Case No. 2009-1358) (see my blog post) for support, they chose to look to the underlying invention for patent-eligibility purposes.

This lead to a view that the process of claim 1 could be performed by a human writing on a piece of paper. The step of creating a record in a first database table, for example, could be performed on a piece of paper. Apparently.

According to Cybersource, a method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible under 101.

A database table can be represented using a pen and paper, according to the Board. The scope of claim 1's method steps covered functions that can be performed in the human mind, or by a human using a pen and paper. Therefore unpatentable mental processes fall within the subject matter of claim 1.

Nominal recitation

Turning to claim 23, the Board observed that this claim includes a nominal recitation of "a computer readable medium."

Looking again at the underlying invention, the Board concluded that the scope of claim 23 covers functions that can be performed in the human mind, or by a human using a pen and paper.

Conventional hardware

Even the apparatus claims were not safe from the Board's interpretation. Claim 45 was said to include nominal recitations of conventional hardware in the body of the claim. Examples of such hardware included at least one data storage device, at least one user input device, and a processor. Once again the Board looked to the underlying invention for patent-eligibility purposes.

The Board again concluded that the scope of the recited functions (steps) covers functions that can be performed in the human mind, or by a human using a pen and paper. The Board referred to Dealertrack v Huber Case No. 2009-1566  (see my blog post). Simply adding a 'computer aided' limitation to a claim covering an abstract concept, without more, is insufficient to render the claim patent eligible.

Further steps

The Board affirmed the Examiner's rejection of claims 1-46 under 35 USC 101. It's a pity that the Board did not mention Ultramercial, LLC v. Hulu, LLC, No. 2010-1544 (Fed. Cir. Sept. 15, 2011) (see my blog post).

These claims may well have passed the Utramercial reasoning. This Board was clearly not in the Rader camp.

Photo courtesy of author ralphbijker under Creative Commons licence.

Friday, February 24, 2012

D. finds non-functional descriptive matter

20111115-NodeXL-Twitter-teaparty network labelsEx Parte D. et al, No. 2009-013829 (BPAI Feb 15, 2012) involved a method of generating network data traffic utilizable in communication systems. LSI Corporation brought US Patent Application 10/620,044 before the Board of Patent Appeals and Interferences. The Examiner had rejected claims 20 and 21 as being directed to non-statutory subject matter. The Examiner had also rejected other claims based on prior art.

Claim 20 read as follows:
20. An article of manufacture comprising a computer-readable storage medium encoded with one or more data structures comprising information characterizing one or more traffic flows associated with at least one traffic generator, represented as a string which includes a global header followed by one or more frames each having an associated frame header, wherein the global header comprises a clock speed field indicating a clock speed of an associated output interface.
Physical or logical relationship

The Appellants argued the Examiner had got it wrong.

The claimed data structure, said the Appellants, defines a 'physical or logical relationship among data elements'. The claims are therefore drawn to statutory subject matter.


Non-functional descriptive material

The Board disagreed. They found some sympathy with the Examiner that the claims merely recite non-functional descriptive material.


Further steps

The Board sustained the Examiner’s rejection of claims 20 and 21 under 35
U.S.C. § 101.

Photo courtesy of author Marc Smith under Creative Commons licence.


Wednesday, February 22, 2012

Rigoutsos finds that adding data not enough

magnifying glass
Ex Parte Rigoutsos, No. 2009-010520 (BPAI Feb 7, 2012) involved techniques for annotating sequences, particularly query sequences. Patterns associated with a database, comprising annotated sequences, are accessed. Attributes are assigned to the patterns based on the annotated sequences. The patterns with assigned attributes are used to analyse the query sequence.

International Business Machines Corporation brought US Patent Application 10/305,582 before the Board of Technical Appeals and Interferences. The Examiner had objected that claims 1-17 were directed to a method for annotating a query sequence which does not qualify as a patent eligible process.

Claim 1 as a representative claim, read as follows:
1. A method for annotating a query sequence, the method comprising the steps of:

accessing patterns associated with a database comprising annotated sequences;

assigning attributes to the patterns based on the annotated sequences; and

using the patterns with assigned attributes to analyze the query sequence.
 Claim 26 was directed to an article of manufacture as follows:
26. An article of manufacture for annotating a query sequence, comprising a machine readable medium containing one or more programs which when executed implement the steps of:

accessing patterns associated with a database comprising annotated sequences;

assigning attributes to the patterns based on the annotated sequences; and

using the patterns with assigned attributes to analyze the query sequence.
A manual method

The Board agreed with the examiner that claim 1 is not directed to a patent eligible process under 35 U.S.C. §101.

They found that the following steps were broad enough to encompass a manual method by a user:
  1. accessing patterns associated with a database comprising annotated sequences;

  2. assigning attributes to the patterns based on the annotated sequences;
    and

  3. using the patterns with assigned attributes to analyze the query sequence.
No Transformation

The Appellant argued that the claimed method and apparatus transform the patterns with annotated sequences to derive patterns with assigned attributes. This transformation to patterns with assigned attributes, said the Appellant, provides a useful, concrete and tangible result.

The Board noted that the "useful, concrete, and tangible" test is no longer in fashion. The Board ignored the Appellant's argument to the extent that it relied on the “useful, concrete and tangible” test.

In any case, there was no transformation set out in claim 1. At most, independent claim 1 recited adding additional data to other data without expressly setting forth any of the specifics of the process.

For this reason, said the Board, there was no statutory transformation.

The underlying invention

The Board then lined up article claim 26.

The Board noted that independent claim 26 recites the same limitations and merely sets forth a preamble directed to an article of manufacture. The Board left it up to the Examiner to evaluate this claim with respect to the process which underlies the broad/generic system and article preamble.

Citing Cybersource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011) (see my blog post), the Board noted that the Examiner may analyse the underlying invention of an appropriate claim as a process.

Further steps

The Board affirmed the Examiner's rejection of claims 1-17 as based upon non-statutory subject matter. They also gave the Examiner a nudge toward a non-statutory rejection of the article claims.

Photo courtesy of author Tall Chris under Creative Commons licence.

Tuesday, February 21, 2012

Foth the postie gets it right

More Mail SortingEx Parte Foth et al, No. 2010-008318 (BPAI Feb 9, 2012) involved a way of applying mailer applied restriction regarding changing of delivery parameters for a mail piece. Pitney Bowes Inc. brought US Patent Application 11/321,175 before the Board of Patent Appeals and Interferences because the Examiner had rejected claims 1-9 and 12 as directed to non-statutory subject matter and had raised obviousness objections to other claims.

Claim 1 read as follows:
1. A method of changing delivery parameters of a mail piece, the method comprising:
receiving the mail piece from a mailer;

receiving from the mailer an electronic file relating to electronic delivery change instructions from an intended recipient of the mail piece;

applying a marking on the mail piece associated with an address of the intended recipient;

mailing the mail piece;

sending the intended recipient information regarding the mailed mail piece;

receiving from the intended recipient an electronic delivery change instruction to change at least one of the delivery parameters of the mail piece after the mail piece has been mailed;

comparing the electronic delivery change instruction with the electronic file to determine prohibited delivery change instructions; and

limiting the intended recipient from changing the at least one of the delivery parameters where the electronic delivery change instruction comprises a prohibited delivery change instruction.
Transformation

Does a method that places indicia on a mail piece and mails that piece transform that piece?

The Appellants argued that applying a marking on a mail piece transforms that piece.

The Examiner had argued that the underlying mail piece is unchanged, therefore there is no transformation.

The Board agreed with the Appellants, discarding the Examiner's rejection as irrelevant. The combination of the mail piece and the marking forms an article that differs from what began. The distinction is fundamental rather than ornamental, as it is needed to complete the mail piece.

Further steps

The Board reversed the Examiner's findings regarding claims 1-9 and 12. These claims were held to be directed to statutory subject matter. The Board then promptly affirmed the Examiner's rejection of all but claims 10 and 11 as being obvious over prior art.

Photo courtesy of author jmv under Creative Commons licence.

Monday, February 20, 2012

A dud deal for Dealertrack

16 carsIn Dealertrack v Huber Case No. 2009-1566 we saw Dealertrack, Inc. ("Dealertrack") take an appeal to the United States Court of Appeals for the Federal Circuit (CAFC). The United States District Court for the Central District of California had found claims 1, 3, and 4 of their US Patent 7,181,427 invalid for failure to claim patentable subject matter under 35 USC 101.

The invention

Car dealers were sick of filling in forms.  In seeking car loans on behalf of their customers, they would apply to funding sources for example banks. This involved filling out application forms particular to each bank, faxing or transmitting the application to the respective banks, waiting for bank personnel to enter the application information into their internal computer systems, and eventually receiving responses from each bank.

Dealertrack proposed to automate the process through the use of a "central processor," which receives credit application data from dealers, processes the data to conform to the individual application forms of different banks, forwards the completed applications to banks selected by the dealer, receives answers from the banks, and forwards those answers back to the dealer.

Claim 1, as a representative claim, read as follows:
1. A computer aided method of managing a credit application, the method comprising the steps of:

receiving credit application data from a remote application entry and display device;

selectively forwarding the credit application data to remote funding source terminal devices;

forwarding funding decision data from at least one of the remote funding source terminal devices to the remote application entry and display device;

wherein the selectively forwarding the credit application data step further comprises:

sending at least a portion of a credit application to more than one of said remote funding sources substantially at the same time;

sending at least a portion of a credit application to more than one of said remote funding sources sequentially until a [funding] source returns a positive funding decision;

sending at least a portion of a credit application to a first one of said remote funding sources, and then, after a predetermined time, sending to at least one other remote funding source, until one of the [funding] sources returns a positive funding decision or until all funding sources have been exhausted; or,

sending the credit application from a first remote funding source to a second remote [funding] source if the first funding source declines to approve the credit application.
What does computer aided mean?

The CAFC observed that the claim, in its simplest form, involved three steps:
  1. receiving data from one source
  2. selectively forwarding the data
  3. forwarding reply data to the first source
The claim was directed to the basic concept of processing information through a kind of clearinghouse. The Court felt that the steps did not impose meaningful limits on the claim's scope. Neither Dealertrack nor any other entity were entitled to wholly preempt the clearinghouse concept.
Dealertrack argued that the “computer aided” limitation in the preamble sufficiently limits the claims to an application of the idea. The Court disagreed.

The patent did not specify how the computer hardware and database are specially programmed to perform the steps claimed in the patent. The claims were silent as to how a computer aids the method, the extent to which a computer aids the method, or the significance of a computer to the performance of the method.

The undefined phrase “computer aided”, said the CAFC, is no less abstract than the idea of a clearinghouse itself. Because the computer here can be programmed to perform very different tasks in very different ways it was held not to play a significant part in permitting the claimed method to be performed.

Simply adding a “computer aided” limitation to a claim covering an abstract concept, without more, is insufficient to render the claim patent eligible.

It was noted that the claims here do not require a specific application, nor are they tied to a particular machine. The claims were held to cover a clearinghouse process using any existing or future-devised machinery.

The Court then distinguished Dealertrack's claims from those in Ultramercial, LLC v. Hulu, LLC, No. 2010-1544 (Fed. Cir. Sept. 15, 2011) (see my blog post).

In Ultramercial, the Court found that the patent claimed a practical application with concrete steps requiring an extensive computer interface.

However, in the case of Dealertrack, the claims recite only that the method is “computer aided” without specifying any level of involvement or detail. The fact that certain algorithms are disclosed in the specification does not change the outcome. In considering patent eligibility under § 101, the Court felt it needed to focus on the claims. This is because a claim may “preempt” only that which the claims encompass, not what is disclosed but left unclaimed.

It didn't help that Dealertrack's claims had already been construed not to be limited to any particular algorithm. Dealertrack had not appealed the District Court’s construction.

A particular use

Dealertrack also argued that claim 1 was patent eligible because it covers the use of a clearinghouse only in the car loan application process, and not all uses thereof.

The Court didn't buy this argument either. The claim was directed to a particular use, sure. But it still covered a broad idea. The notion of using a clearinghouse generally and using a clearinghouse specifically to apply for car loans, like the relationship between hedging and hedging in the energy market in Bilski, is of no consequence without more.

Further steps

The Court affirmed the determination of the District Court that claims 1, 3 and 4 are patent ineligible abstract ideas.

Photo courtesy of author Ben McLeod under Creative Commons licence.

Friday, February 17, 2012

Claribel Chan finds a one-eyed lens

DAY 2/366: Land LockedEx Parte Chan et al, No. 2009-010908 (BPAI Jan 30, 2012) involved computer systems, software and methodologies for business solution management. US Patent Application 10/624,860, owned by SAP AG, was the subject of fairly extensive analysis by the Board of Patent Appeals and Interferences. The Board in my view developed quite an innovative lens through which to view the claims.

During examination, the Examiner objected to claims 1-3 and 5-31 for non-statutory subject matter. Three representative claims are claims 1, 25 and 29.

Claim 1 read as follows:
1. A business solution management system comprising: 
software comprising instructions stored in a computer readable medium, the software:

allowing a user to design a business solution with user parameters, instantiated user-selectable, pre-defined business objects, and instantiated user-selectable, pre-defined technology objects;

allowing a user to maintain and modify the business solution designed by the user subsequent to implementation of the business solution, the implementation based, at least in part, on a current state of the business objects and the technology objects; and

persisting the modified business solution for subsequent presentation through a graphical user interface;

a first data repository comprising the instantiated user-selectable, pre-defined business objects; and

a second data repository comprising the instantiated user-selectable, pre-defined technology objects.

Claim 25 read:
25. A computer-implemented method comprising:

providing at least a first software application and a second software application, the first software application allowing a user to design a business solution with user parameters, instantiated user-selectable, pre-defined business process objects, and instantiated user-selectable, pre-defined technology objects, and the second software application allowing the user to maintain and modify the business solution subsequent to implementation of the business solution, the implementation based, at least in part, on a current state of the business process objects and the technology objects, at least one of the first or second software applications persisting the modified business solution for subsequent presentation through a graphical user interface;

providing the instantiated user-selectable, pre-defined business process objects to a first data repository; and

providing the instantiated user-selectable, pre-defined technology objects to a second data repository.
Claim 29 read as follows:
29. An article comprising a machine-readable medium storing instructions operable to cause one or more machines to perform operations comprising:

prompting a user to select at least one instantiated business process object and one instantiated technology object;

receiving user parameters;

designing a business solution using the selected business process object, technology object, and user parameters;

maintaining and modifying the business solution subsequent to implementation of the business solution, the implementation based, at least in part, on a current state of the business object and the technology object; and

persisting the modified business solution for subsequent presentation through a graphical user interface.
Transitory signals

The Board first looked at claim 25. They noted that the claim:
'merely sets forth the steps of "providing..." which are broad enough to read on the disclosed "machine-readable signal" which is any signal used to provide machine instructions and/or data to a programmable processor.'
Claim 25 was therefore held to be directed to non-statutory transitory signals. The Board upheld the Examiner's decision to reject the claim as covering non-statutory subject matter.

Claim 25, according to the Board, also failed both steps of the machine or transformation test.

The mere preamble language of 'computer-implemented method' was not sufficient to tie the claim to a particular or specific machine/computer.

On the transformation angle, the Appellants asserted that the data being transformed represented underlying physical objects. However the Appellants did not identify any specific definition for what the Board described as 'these sweeping generalities.' Arguing that there were 'transformative aspects' in the claim didn't work either.

An abstract idea

The Board had quite a lot to say about system claim 1 and article claim 29. They said both claims represented an unpatentable mental process. They also determined that the claims failed both steps of the machine or transformation test.

As a starting point, the Board stated it would address the process which underlies the broad/generic system preamble. Citing CyberSource Corp. v. Retail Decisions, Inc. (Case No. 2009-1358) (see my blog post), they felt able to 'look to the underlying invention for patent-eligibility purposes'.

The Board determined the underlying invention of both claim 1 and claim 29 as a process.

The underlying method, said the Board, could be performed by a human writing on a piece of paper. A method that can be performed by human thought alone is merely an abstract idea and not patent eligible.

The scope of the method steps of claim 1 cover functions that can be performed in the human mind, or by a human using a pen and paper. Accordingly, these unpatentable mental processes fall within the subject matter of claim 1.

As if that wasn't enough, the Board went on to conclude that the claimed underlying process failed both steps of the machine or transformation test. First, the abstract process steps of the software in combination with the two repository elements did not recite a specific machine. Secondly, the process did not set forth a transformation of an article and the data was not limited to a specific type of data so as to impart patent eligible subject matter.

Further steps

The Board affirmed the Examiner's rejections of claims 1-3 and 5-31 as directed to non-statutory subject matter.

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Thursday, February 16, 2012

Hu finds that storage is the key

Storage HallwayEx Parte Hu et al, No. 2010-000151 (BPAI Feb 8, 2012) involved a method and system for performing log-based recovery by allowing a plurality of worker processes to process in parallel a plurality of work items in a log. Each work item represented an ordered operation on a corresponding data object.

Oracle International Corp. brought US Patent Application 10/982,135 before the Board of Patent Appeals and Interferences as the examiner had rejected claims 26-45 as being directed to non-statutory subject matter.

Claim 26, as a representative claim, was directed to a computer-readable storage medium tied to the method of claim 1. Claim 26 read as follows:
26. A computer-readable storage medium storing one or more sequences of instructions which, when executed by one or more processors, causes the one or more processors to perform the method recited in Claim 1.
 Claim 1 in turn read as follows:
1. A method for processing sequences of work items from a log, wherein each work item in said log corresponds to a particular data object, the method comprising the computer-implemented steps of:

each of a plurality of Worker processes performing the steps of :

reading, from said log, a subset of the work items;

producing one or more sequentially ordered sets of work items;

wherein each of said one or more sequentially ordered sets corresponds to one or more data objects;

wherein each of said one or more sequentially ordered sets includes work items for the one or more data objects to which the sequentially ordered set corresponds; and

wherein, within each of said one or more sequentially ordered sets, work items are ordered in the same relative order as the work items were ordered in the log.
It's a storage medium

Oracle argued that the computer-readable storage medium recited in claims 26-45 is directed to a storage medium that can be read by a computer. Therefore, the claimed storage medium excludes intangible signals and transmission media that merely carry information as opposed to storing them.

No it isn't

The Examiner's view was that the specification failed to define a computer-readable storage medium to exclude carrier waves. Therefore the claims encompass transitory signals and are directed to non-statutory subject matter.

Yes it is

The Board disagreed with the examiner. They found that the computer-readable storage medium was directed to a tangible storage medium, which can be read by a computer.

A computer-readable medium is broad enough to cover intangible media. However, a computer readable storage medium is confined to tangible media for storing data.

Because the cited claims are limited to a tangible medium within one of the four statutory classes, they are directed to statutory subject matter.

Further steps

The Board reversed the Examiner's rejection and allowed all claims.

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Wednesday, February 15, 2012

Edelson finds an abstract intangible asset

Finance mazeEx Parte Edelson, No. 2011-004285 (BPAI Feb 6, 2012) involved a way for creating financial instrument derivatives of rollups of recurrent yield monetary based assets. Whatever that means. The inventor Harry Edelson briefed counsel to appear before the Board of Patent Appeals and Interferences for his US Application Number 11/101,436.

Claims 11-13 and 15-20 had been rejected by the Examiner as directed to non-statutory subject matter.

Claim 11, for example, read as follows:
11. A computer-implemented method for creating recurrent yield monetary asset based financial instrument derivatives by a rollup entity in communication with at least one recurrent yield monetary asset resource, said recurrent yield monetary asset having an asset value, said method comprising:

communicating between said rollup entity and said at least one recurrent yield monetary asset resource regarding acquiring an at least one recurrent yield monetary asset selected from the group consisting of royalties, salaries, royalty-type streams of revenues, publishing royalties, copyright royalties, trademark royalties, patent royalties, oil-revenue royalties, movie and video publishing royalties, said recurrent yield monetary assets;
transferring from said at least one recurrent yield monetary asset resource to said rollup entity said recurrent yield monetary asset;

depositing said one recurrent yield monetary asset into a rollup entity earnings account;

calculating at least one of the group consisting of a cash value and a number of shares of said financial instrument derivatives based on said asset value; and

issuing from said rollup entity to said at least one recurrent yield monetary asset resource said calculated number of shares of said financial derivative instrument.
Abstract idea

The Examiner had objected that claim 11 performs no physical transformation and does not recite how a specific machine is used. Therefore the claim recites no more than an abstract idea.

The Appellant argued that the claim wasn't just to an abstract idea. The claim, said the Appellant, transforms a royalty stream into a derivative.

Abstract concept

The Board agreed with the Examiner. They said that claim 11 does no more than lay out the concept of issuing a derivative instrument.

The claims, said the Board, don't refer to a specific machine by reciting structural limitations to any apparatus.  The claims don't recite any specific operations that would cause a machine to be the mechanism to communicate or calculate information, or to deposit or issue an intangible asset.

The Board went further and observed that to communicate, calculate or issue intangible information requires no machine, only the conscious thought of the one controlling the operation. To deposit such intangible information requires only an agreement that such a deposit is made.

The Board concluded that, absent any specific structural limitations on how one acts to perform these steps, these claims recite no more than the abstract concept of issuing an abstract intangible asset. A patent would effectively grant a monopoly over an abstract idea.

Computer-implemented is computer aided

The Board went on to consider the term "computer-implemented method" in claim 11.  Citing Cybersource Corp. v Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. Aug 16, 2011) (see my blog post), they said that simply using some computer-implemented method in some undefined manner alone cannot confer patentability.

Citing Dealertrack v Huber Case No. 2009-1566, the Board noted that the phrase "computer-implemented" modifier is comparable in scope to "computer-aided" and so its inclusion in the preamble does not change the outcome.

Further steps

The Board affirmed the Examiner's rejection of claims 11-13 and 15-20 as directed to non-statutory subject matter.

Photo courtesy of author RambergMediaImages under Creative Commons licence.

Tuesday, February 14, 2012

Chen and the patentable business model

Analyzing Financial DataIn Ex Parte Chen et al, No. 2009-012206 (BPAI Jan 25, 2012), we saw International Business Machines Corporation take US Patent Application 11/230,446 to the Board of Patent Appeals and Interferences. The invention related to business model data management.

Claim 1 for example read as follows:
1. A computer-implemented business model data management method comprising: 
identifying a business object within a business object structure document for a business application; 
locating data management rules for said identified business object in a business object descriptor document; and, 
executing said located data management rules to represent said identified business object in a database for said business application.
Claim 12 was for a computer program product:
12. A computer program product for business object data management comprising a computer useable medium having computer usable program code tangibly embodied therein, the computer useable program code comprising: 
computer usable program code configured to identify a business object within a business object structure document for a business application;
computer usable program code configured to locate data management rules for said identified business object in a business object descriptor document; and, 
computer usable program code configured to execute said located data management rules to represent said identified business object in a database for said business application.
Examiner rejections


During examination the Examiner had objected that method claims 1-4 were not tied to another statutory class, for example an apparatus such as a special purpose computer. The examiner objected that the method did not transform an article or thing to a different state or thing.

Claims 12-15, according to the Examiner, were not limited to tangible embodiments. The Examiner found a paragraph in the specification that suggested a computer useable medium could be either tangible (paper, removable storage, or hard disk drive) or intangible (carrier-wave signal).

Transformation

The Appellants argued that the third step of method claim 1 constitutes a transformation of an article to a different state of thing. The transformation of data passes muster if it is central to the purpose of the claimed process.

In this case, said the Appellants, the business object in a database for a business application is data that represents physical and tangible objects that have been transformed.

The Board agreed, noting that:
'Although simply adding a "computer-implemented" limitation to a claim covering an abstract concept is insufficient to render a claim patent eligible, claim 1 includes more.'
Claim 1, they said, uses a computer to implement specific algorithms (eg data management rules) that are required to be located and executed in order to represent an identified business object in a database.

The claim, when read as a whole:
'is more than just an abstract idea, it is a method requiring the use of a special purpose computer that can perform the location and execution of data management rules. The business model data management method of claims 1-4 is implemented by a computer (claim 1, preamble), manages business model data (claim 1, preamble), and locates and executes rules to represent identified business objects in a database for a business application (claim 1, last two clauses). Claim 1 is therefore tied to a particular class and further operates to transform an article (e.g., data in the database and objects within an object structure)'.
The Board agreed with the Appellants that the third step (last clause) of claim 1 constitutes a transformation of an article to a different state or thing. The recited business object in a database for a business application is data that represents physical and tangible objects that have been transformed.

Tangible media


The Appellants also had a crack at the computer useable medium claims as well. It was unlikely to persuade the Board, but good on them for giving it a go.

They said the preamble of claim 12 calls for a "tangible" embodiment of the computer useable medium containing the computer usable program code. They said the Examiner was wrong in determining that claim 12 can be broadly interpreted as encompassing intangible media like carrier-wave signals.

The Board agreed with the Examiner. They said that, when read in light of the specification, claim 12 includes both statutory subject matter and non-statutory subject matter. The Appellants did not provide examples or otherwise define the differences between tangible and intangible embodiments of computer useable media. They did not provide examples or otherwise specifically define the differences between transitory and non-transitory computer useable media. According to USPTO guidelines, these sort of claims need to be amended to recite solely statutory subject matter.

Further steps

The Board reversed the Examiner's rejection of claims 1-4 as being directed to non-statutory subject matter. And promptly affirmed the Examiner's rejection of the same claims for lack of novelty over prior art. The Examiner's rejection of claims 12-15 as being directed to non-statutory subject matter was also affirmed.

Photo courtesy of author Dave Dugdale under Creative Commons licence.

Thursday, February 9, 2012

Ritner has a trick up his sleeve

con las cartas correctasIn Ex Parte Ritner JR. et al, No. 2009-013343 (BPAI Jan 18, 2012), we saw counsel for the inventors Ritner JR. and Ehrlich appear before the Board of Patent Appeals and Interferences. The Appellants were arguing that their US Patent Application 10/323,455 should be patentable.

The invention was directed to a casino style card game having wagering features. The game used one or more decks of standard playing cards.

Claim 1 for example read as follows:
1. A method of playing a wagering game utilizing one or more decks of standard playing cards comprising: 
accepting a primary wager from each participating player; 
dealing each player and a dealer five cards; 
requiring each player and the dealer to arrange the five cards into a three-card hand and a two-card hand wherein each player's two-card hand must achieve a minimum pre-established rank for each player to be eligible for a payout on the primary wager and wherein the dealer's hand is not required to achieve a minimum preestablished rank; 
comparing the rank of the dealer's three-card hand to the rank of each player's three-card hand and comparing the rank of the dealer's two-card hand to the rank of each player's two-card hand; and 
settling each player's primary wager dependent upon the comparison of the rank of the dealer's three-card hand to the rank of each player's three-card hand and the comparison of the rank of the dealer's two-card hand to the rank of each player's two card hand.
The Examiner had objected to claim 1 and others as being directed to non-statutory subject matter.  The Examiner applied only the machine-or-transformation test.

Not abstract

The Board agreed with the Appellants. They noted that the Examiner cited the machine-or-transformation test but had not articulated a full analysis under 35 U.S.C. 101.

Claim 1 contained a limitation for dealing each player and a dealer five cards and settling each player's primary wager. These were not abstract ideas or insignificant extra-solution activity in the scope of the claim.

The Board reversed the Examiner's rejection of the claims as being directed to non-statutory subject matter.

Photo courtesy of author ARACELOTA under Creative Commons licence.

Wednesday, February 8, 2012

Anderson: Firewall reporting encompasses signals

Lewes Bonfire Night 2007 - Wall of FlameEx Parte Anderson et al, No. 2009-013430 (BPAI Jan 24, 2012) involved US Patent Application 10/922,500 assigned to IBM Corporation.  The invention related to a graphical representation of a firewall and a network coupled to a firewall.

Claim 11 for example read as follows:
11. A computer program product for reporting a data flow in a firewall, said computer program product comprising: 
a computer readable medium; 
first program instructions to display a graphical representation of said flrewall and a network coupled to said firewall; 
second program instructions to display a number of an inbound port of said network; and 
third program instructions to display an arrow adjacent to said port number pointing toward said network indicating that a communication is permitted to said port; and 
wherein said first, second and third program instructions are recorded on said medium.

Tangible embodiment

The Examiner had objected that the language of claim 11 did not limit the "computer readable medium" to a tangible embodiment.

The Board agreed. They observed that the term "computer readable medium" recited in claim 11 encompasses transitory propagating signals.

The Examiner's rejection of claims 11-15, 20 and 25-28 as being directed to non-statutory subject matter was affirmed.

Photo courtesy of author Dominic Alves under Creative Commons licence.


Tuesday, February 7, 2012

BPAI finds statutory subject matter in Chen

Business Calendar & ScheduleIn Ex Parte Chen et al, No. 2009-013814 (BPAI Jan 22, 2012), IBM Corporation brought US Patent Application 11/458,435 before the Board of Patent Appeals and Interferences. The invention involved a method, apparatus and computer program product for controlling and viewing appointments in a calendar and schedule system.

Claim 9 for example read as follows:
9. A calendaring and scheduling … data processing system comprising: 
[calendaring and scheduling] core logic coupled to a data store of events; 
a [calendaring and scheduling] user interface; and, 
access control logic comprising program code enabled to determine whether to include portions of events in the data store of events in a shared calendar view of the [calendaring and scheduling] user interface on a field-by-field basis according to field level access attributes for the events, wherein 
a description of the event is suppressed from display in the shared calendar view; and,
the shared calendar view includes a time range and type for the event.

Just a computer program
During examination the Examiner found that claim 9 did not specify that the claimed invention includes hardware. Therefore, the language of the claim merely describes a computer program per se.

Use of a device
The Appellants argued that claim 9 was not directed to software per se. They said that the claimed calendaring and scheduling core logic coupled to a data store implies both functionality and structure (hardware). The claimed user interface is necessarily a device that interfaces with a user for calendaring and scheduling.

The Board agreed, finding error in the Examiner's rejection. Claim 9 recites, inter alia, a data processing system, calendaring and scheduling core logic coupled to a data store of events, a calendaring and scheduling user interface, and access control logic.

The core logic coupled to a data store of events implies structure for example hardware.

The user interface amounts to a device or machine because it implicates the use of a computer monitor that allows a prospective user to interface with the core logic and the data store.

The claimed features include hardware (database and machine), therefore the claim doesn't merely describe software per se.

Further steps
The Board reversed the Examiner's decision to reject claim 9 and dependent claims as being directed to non-statutory subject matter. However the Examiner's rejection against all but two claims based on prior art was affirmed. So claim 9 ended up invalid anyway.

Photo courtesy of author photosteve101 under Creative Commons licence.

Monday, February 6, 2012

Megathis and megathat

Prison ?It has been a few weeks since police swooped on "Mega Conspiracy" member Kim Dotcom and his buddies in a sleepy suburb north of Auckland. Since then we've seen the media chasing a story, and the politicians chasing the media.

We've heard from his neighbors that he drove too fast. We've heard from a school teacher that he was an antisocial child. We've heard from colleagues that he had some sort of ego complex. We've seen the minor Government parties questioning the decision to grant him residency in New Zealand.

So what was he actually doing?

Kim Dotcom and his buddies were operating what they called a "cyberlocker" site, a private data storage provider. What they were actually doing is a little unclear. His legal team would say he's operating some sort of safety deposit box. Prosecutors would say he's operating a digital crack house. The truth is probably somewhere in between.

The Megaupload.com website worked a bit like this: An internet user uploaded a computer file. Megaupload.com reproduced the file on at least one of its computer servers. Megaupload.com generated a unique Uniform Resource Locator or URL for that file. The user, or someone else, could then download the file once given the URL.

So what's the problem?

Well, quite a lot. According to a Grand Jury Indictment filed Jan 5, 2012, Kim Dotcom and his pals were members of a "Mega Conspiracy"; alleged to be:
a worldwide criminal organization whose members engaged in criminal copyright infringement and money laundering on a massive scale with estimated harm to copyright holders well in excess of [US]$500,000,000 and reported income in excess of [US]$175,000,000.
In my view those numbers are pretty staggering. But that's all they are. Just numbers. There will hopefully be a lot more detail forthcoming as to how those numbers are calculated.

The site claims to have had more than one billion visitors in its history, more than 180,000,000 registered users to date, an average of 50 million daily visits; and to account for approximately four percent of the total traffic on the Internet.

The specific counts against Kim Dotcom and his pals include:
  1. Conspiracy to commit racketeering

  2. Conspiracy to commit copyright infringement

  3. Conspiracy to commit money laundering

  4. Criminal copyright infringement by distributing

  5. Criminal copyright infringement by electronic means
My colleague Simon Fogarty sums it up very succinctly in a recent article as saying:
'the prosecution depends on the defendants' knowledge that there was illegal file-sharing going on; that they encouraged it, that they made money from it, and that they paid rewards to users who contributed to it.'

Conspiracy to commit copyright infringement

The conspiracy count makes for the most interesting reading.

Reproducing copyright works

The Mega Conspiracy operated a whole bunch of websites.  One of these, called Megavideo.com, was for users who did not want to download whole copies of content.  They could stream them. Just like YouTube. In fact, exactly like YouTube. The Mega Conspiracy is accused of reproducing copyrighted works directly from YouTube.com.

One of the intercepted emails between conspirators Bram van der Kolk and Mathias Ortmann reads:
"Do we have a server available to continue downloading of the YouTube's vids? ... Kim just mentioned again that this has really priority."
Reward payments

The Mega Conspiracy is alleged to have provided financial incentives for users to upload infringing copies of popular copyrighted works.  The Conspiracy made payments to uploaders who were known to have uploaded infringing copies of coprighted works.

Bram van der Kolk commented on one of the users deemed eligible for payment as follows:
"Our old famous number one on MU, still some illegal files but I think he deserves a payment".
Reproduction and distribution

Members of the Mega Conspiracy are alleged to have willfully reproduced and distributed infringing copies of copyrighted works using computer servers controlled by the Conspiracy.

Alleged conspirator Julius Bencko sent a few emails to Bram van der Kolk, like this one:
"the sopranos is in French :((( fuck.. can u pls find me some again?"
And this:
"can u pls get me some links to the series called "Seinfeld" from MU?"
 And this one too:
"sorry to bother but if you would have a second to find me some links for the "Grand Archives" band id be very happy."
Failure to remove

Members of the Mega Conspiracy are accused of not deleting infringing copies of copyrighted works from computer servers that they controlled, even when they were aware of the infringing material or the removal was specifically requested by the copyright holder.

There's this email from Kim Dotcom to Mathias Ortmann:
"Never delete files from private requests like this. I hope your current automated process catches such cases."
And there's this one from Dotcom to van der Kolk, Ortmann and Bencko:
"I told you many times not to delete links that are reported in batches of thousands from insignificant sources. I would say that those infringement reports from MEXICO of "14,000" links would fall into that category. And the fact that we lost significant revenue because of it justifies my reaction."
And this one:
"In the future please do not delete thousands of links at ones [sic] from a single source unless it comes from a major organization in the US."
Snitching

There's plenty more stuff in the Indictment. And plenty more stuff to come I guess. Of course all of this is allegation.  There's still some proving to do.  But I think these guys have a bit of explaning to do.

Although not part of the specific charges, this email recorded in the Indictment from Dotcom sent to a PayPal, Inc. representative is quite ironic:
"We like to give you a heads up and advice [sic] you not to work with sites that are known to pay uploaders for pirated content. They are damaging the image and the existence of the file hosting industry... Look at Fileserve.com, Videobb.com, Filesonic.com, Wupload.com, Uploadstation.com. These sites pay everyone (no matter if the files are pirated or not) and have NO repeat infringer policy. And they are using PAYPAL to pay infringers."
Further steps

Kim Dotcom and pals Bram van der Kolk, Finn Batato and Mathias Ortmann are currently sitting in a New Zealand jail. They have been denied bail as they have each been judged to be a real and significant flight risk.  Dotcom has appealed that decision and failed.

The extradition process will now start. An extradition hearing is due on 22 Februrary. We'll be watching that with interest. It will highlight the complex interaction between the criminal provisions of the New Zealand Copyright Act 1994, the New Zealand Extradition Act 1999 and a 1970 Treaty on Extradition between the USA and New Zealand. If the extradition process is successful he will be hauled off to the United States to face the music there.

Back here in New Zealand we will be talking about it for a while. Politicians here are squabbling over whether the decision to grant Dotcom residency was the right one. There is an acknowledged inconsistency between the rules around immigration and foreign ownership. Dotcom was granted residency but he was prevented from buying land.

We'll also be looking at our intellectual property regime. We need to make sure that skilled migrants are moving here for the lifestyle rather than the opportunity to engage in criminal activity.

Photo courtesy of author maciek draba under Creative Commons licence.

Saturday, February 4, 2012

A bit of before and after



We have learned a lot about cattle management since my potentially disastrous start. The problem is that most of our lessons have been learned the hard way. Take Mr "Before-and-After" for example.

My wife and I have an "understanding". She's happy for us to raise cows for consumption, as long as she only sees them "before" (happy in the paddock) and "after" (frozen packets of meat neatly labelled).

When a cow is deemed by us to be ready for the freezer, I will ring up a “homekill” guy and give him a very good description of the animal. He turns up when I'm at work, does something loud and messy, and takes what's left to our preferred butcher.

The first time I dealt with him he asked me if I wanted to keep any of the offal. The conversation went something like this:

"Do you want the tongue?"
"umm yeah, sure"

"What about the liver?
"okay"

heart too?"
"sure"

"the tail is good"
"okay"

"how about the kidneys?"
"umm yeah okay".

I didn't think anything more of it until I came home that night. Mr "Before-and-After" had been and done his job. Upon leaving, he presented my wife with a bag containing a couple of kilograms of grey steaming entrails. She was pregnant at the time and easily persuaded to part with her lunch.

We don't keep the offal anymore.

Last week Mr "before-and-after" came and dispatched one of our heifers, best described as moody and uncooperative. Her nickname was "Fillet Steak". She'll look great in our freezer.

Wednesday, February 1, 2012

No second date for Castaneda

Pen, Diary and Glasses
In Ex Parte Castaneda et al, No. 2009-013594 (BPAI Jan 22, 2012) we saw another case of a claim chucked out because it included within its scope a data signal.

International Business Machines Corp. had filed US Patent Application 11/392,137 for an invention relating to date related event management and more particularly to recurring event management.

According to the specification, date management refers to the scheduling of events according to an occurrence date, time or both.  Software products that include support for calendaring and scheduling include Microsoft Outlook, Lotus Notes, and web-based products like Yahoo! Calendar.

An important feature of a date management system is the ability to schedule a recurring event without requiring the end user to individually set an event on each recurring date. For example, where a meeting is to occur every week on a particular time over the course of several months, the end user can schedule the event as recurring every week at the particular time for the course of the several months.

Claim 13 of the patent application, for example, read as follows:
13. A computer program product comprising a computer usable medium embodying computer usable program code for date driven date selective retrieval for recurrences in date driven data, the computer program product including: 
computer usable program code for defining a date range; 
computer usable program code for retrieving exactly three cached instances for each of the recurrences in the date driven data; 
computer usable program code for selecting only those recurrences that fall within the date range according to the three cached instances for each of the recurrences; and 
computer usable program code for adding the selected recurrences to a subset of the date driven values, and otherwise excluding remaining ones of the recurrences from the subset.
It's physical

The appellant argued that their patent specification identified several examples of hardware stuff that would qualify as statutory subject matter.  This included for example semiconductor or solid state memory, magnetic tape, a removable computer diskette, RAM, ROM, a rigid magnetic disk, and an optical disk.

Not entirely

The examiner had objected that the claim 13 encompassed non-statutory subject matter, such as propagation mediums.  These include electronic, electromagnetic and infrared signals.

The Board agreed with the examiner.  The appellant's specification stated that:
a computer-useable or computer readable medium can be any apparatus that can contain, store, communicat[e], propagate, or transport the program for use by or in connection with the instruction execution system, apparatus, or device. The medium can be an electronic, magnetic, optical, electromagnetic, infrared, or semiconductor system (or apparatus or device) or a propagation medium.
According to the appellant's specification, a computer-useable medium may include propagation mediums such as electronic, magnetic, optical, electromagnetic or infrared signals.

Therefore claim 13 can be broadly but reasonably construed to encompass a transitory, propagating signal, which is non-statutory subject matter.

Furthermore, the claim was not limited to a non-transitory, tangible medium within one of the four statutory classes.  The claim was found to be directed to non-statutory subject matter.

Further steps

The Board affirmed the Examiner's decision to reject claim 13 and dependent claims as non-statutory subject matter.

Photo courtesy of author Generation Bass under Creative Commons licence.
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