[DMCA-Activists] New USPTO Business Method Guidelines

[Seth Johnson]

(I keep coming around to the same idea: there's this inadequate
focus on just plain vanilla "abstraction," when it seems to me
that recognizing *pure* abstraction as non-patentable subject
matter would bring a requisite clarity to the discourse on
software patents.  By "pure abstraction" I don't mean "just
abstraction and nothing else" but rather pure in the sense of
independence from any particular empirical entity, as in the way
logic and math hold true no matter what you apply them to.  Just
talking about plain vanilla abstraction doesn't work, because
there's always abstraction implied in a patent.  The
generalization implied in bringing together such and such a
doohicky with such and such a thingamajig, is an abstraction that
speaks about empirical things, and could be patentable except if
it's just a natural law or just a natural phenomenon.  But for
software, the abstraction is a different sort: it's pure,
independent of any empirical particular, because all computer
algorithms are translateable to pure math.  That the algorithm is
applied to a particular apparatus only signals that *that
apparatus* may be patentable if it's innovative -- not the
algorithm.  Software abstraction is different from the
abstraction of a natural law or the abstraction implied in a
valid patent.  Anyway, I think this is a first precept that needs
to be established, after which all the rest of the questions can
be sorted out much more constructively.  -- Seth)

> http://patentlaw.typepad.com/patent/2005/10/uspto_releases_.html


Oct 27, 2005

USPTO Releases New Business Method Guidelines: Requires "physical
transformation" or "concrete and tangible result"


In the wake of the Lundgren case
(http://patentlaw.typepad.com/patent/2005/10/patent_board_el.html),
the USPTO has released a set of interim examination guidelines
for determining subject matter eligibility of patent
applications. (Link
[http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/guidelines101_20051026.pdf]).
 
The guidelines will be used by examiners "in determining, on a
case-by-case basis, whether a claimed invention falls within a
judicial exception to statutory subject matter (i.e., is nothing
more than an abstract idea, law of nature, or natural
phenomenon), or whether it is a practical application of a
judicial exception to statutory subject matter."

The crux of the new guidelines is that an invention falls within
the scope of 35 U.S.C. 101 "if the claimed invention physically
transforms an article or physical object to a different state or
thing, or if the claimed invention otherwise produces a useful,
concrete, and tangible result."  The application itself should
enable one of ordinary skill in the art to understand the utility
of the invention.

101 Categories: The first step in determining utility of a claim
is to figure out whether the claim is directed toward at least
one of the enumerated subject matter categories — process,
machine, manufacture or composition of matter.

Judicial Exceptions: Then, the examiner should determine whether
the claim is directed to a law of nature, natural phenomena or
abstract idea (mathematical formula fits here too). The PTO
proposes that the way to avoid these exceptions is for the claims
to be directed to a practical application of a § 101 judicial
exception. As the Supreme Court held in Diehr, inclusion of a law
of nature in a claim does not preclude it from patentability so
long as there is a claimed application of that law.

    "[i]t is now commonplace that an application of a law of
nature or mathematical formula to a known structure or process
may well be deserving of patent protection." Diehr

Application of an Exception: The PTO has proposed two ways to
determine whether the claim includes an appropriate application
of a § 101 judicial exception:

   1. The claimed invention "transforms" an article or physical
object to a different state or thing.
   2. The claimed invention otherwise produces a useful, concrete
and tangible result, based on the factors discussed below. 

Physical Transform: Unfortunately, the guidelines provide little
help to determine the meaning of "transforms an article or
physical object to a different state."  (E.g., what is the
difference between an "article" and "physical object.")

Useful, Concrete, and Tangible Result: Even without any "physical
transformation," a claim can be eligible for patenting so long is
there is a "useful, concrete, and tangible result."

    If the claim is directed to a practical application of the §
101 judicial exception producing a result tied to the physical
world that does not preempt the judicial exception, then the
claim meets the statutory requirement of 35 U.S.C. § 101. If the
examiner does not find such a practical application, the examiner
has determined that the claim is nonstatutory.

Useful — must be (i) specific, (ii) substantial and (iii)
credible and specifically recited in the claim.

Tangible — must be some "real-world result." (Tangible is the
antonym of abstract.)

Concrete — must have a result that "can be substantially
repeatable or the process must substantially produce the same
result again."(Concrete is antonym of unrepeatable or
unpredictable.)

Preemption: Finally, the examiner must determine whether the
claim would, in reality, preempt the use of a law of nature or
abstract idea. 

    One may not patent a process that comprises every
"substantial practical application" of an abstract idea, because
such a patent "in practical effect would be a patent on the
[abstract idea] itself. Benson

If an examiner determines that the claimed invention preempts a §
101 judicial exception, the examiner must identify the
abstraction, law of nature, or natural phenomenon and explain why
the claim covers every substantial practical application thereof.

Burden of Proof: The PTO bears the burden of presenting a prima
facie 101 rejection, and if the record as a whole suggests that
it is more likely than not that the claimed invention includes a
practical application, the examiner should not reject the claim.

However, once the the examiner identifies and explains in the
record the basis for why a claim is for an abstract idea with no
practical application, then the burden shifts to the applicant.  

Thanks to Professor Thomas
(http://www.law.georgetown.edu/curriculum/tab_faculty.cfm?Status=Faculty&Detail=1577)
for his heads-up tip on this change.