Expounding further on the idea of transitory signals, as you point out
illuminating pixels on a screen is also a transitory effect that produces no
material change, a signal.
The claim at suit of the '381 patent, claim 19 is
a device claim of which the claim doesn't cover a sequence (method) rather
limits on the device (it's behavior).
Contrast this with RE41,922 patent, the
remaining claims added during reexamination (claims 29 - 35) recite "A method
for displaying images on a display screen of an electronic device" reinforced
with various limitations ("selectably active to receive user input", "wherein
the electronic device is a handheld device", "wherein said translucent image
contains at least one feature of interest...", etc.).
While the device(s)
are mentioned in the claims ( Gottschalk v. Benson at 70, "Transformation and reduction
of an article "to a different state or thing" is the clue to the patentability
of a process claim that does not include particular machines.") the mentioned
devices only enablement is found in the written description, the preferred
embodiment, description for Figure 1 and Figure 1.
The added written
description (in red) for Figures 18 through 26 provide the only enablement for
the methods besides prior art. This tells us that the claims are on field of
use limitations (e.g. claim 29 "A method for displaying images on a display
screen of an electronic device, comprising the steps of:...").
We know from
the chain of cases through Diamond v. Diehr at 183 and 184 (Gottschalk v. Benson at
70, Cochrane v. Deener, 94 US 780 - Supreme Court 1877 at
787-788) that "The machinery pointed out as suitable to perform the process may
or may not be new or patentable; whilst the process itself may be altogether
new, and produce an entirely new result. The process require that certain things
should be done with certain substances, and in a certain order; but the tools to
be used in doing this may be of secondary consequence.", which leads us to the
question of whether or not abstracts (transitory signals) are or should be the
subject of a patentable process even produced by a machine. This has the effect
of conceding a machine is involved, the machine itself not additionally patent
eligible herein and the very subject of Gottschalk v. Benson, wherein transitory
signals were held to not be patentable subject matter. See the claims in suit 8
and 13 in APPENDIX TO
OPINION OF THE COURT (scroll down) where we find a striking similarity to
the method claims depending on devices (machinery).
You or I might hold that
the two Apple patents should be held invalid by Gottschalk v. Benson, a feat
apparently not within the means of the USPTO's patent examiners.
Man has had a
problem distinguishing between symbols and referents (names and things) since
the at least the time of Aristotle at the dawn of our written history.
Our
learned judges have embraced symbol for referent in the definition of document ("3
: a
computer file containing information input by a computer user and usually
created with an application (as a word processor) ") in the last decade or so
allowing electronic filing. If the legal profession can accept the instructions
for creating the display of or printing a document as being embraced in the
word's meaning we would require that the display on a computer screen be seen as
a transitory signal to distinguish performing the display from patent eligible
subject matter. You could postulate the claims in Gottschalk were rejected for
mentioning the words 'signal' and 'representation' directly.
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