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USPTO Guide: (c) Non-Statutory Process Claims | 661 comments | Create New Account
Comments belong to whoever posts them. Please notify us of inappropriate comments.
USPTO Guide: (c) Non-Statutory Process Claims
Authored by: Ian Al on Tuesday, April 02 2013 @ 04:46 AM EDT
I agree with you, but you missed my satire as with 'calculating the algorithm' and 'displaying the human condition' being the patented inventive concept in the invention.

You said
A point you may be missing, is that a process claim may comprise (i.e., involve) use of a computer or microprocessor for some data processing. This does not mean that the claim only involves data processing. There may well be additional elements or steps in the claim (e.g., curing rubber), and the claim needs to be assessed as a whole. The instruction is directing examiners to determine whether, in the case of a claim to a computer-implemented process, the claim is not a statutory process but is drawn to an abstract idea (in the sense of Bilski) or a law of nature.
Indeed I did not. The example citing Diehr was always on my mind. Diehr made the specific point that the math carried out by the computer was only protected as part of the whole process.

§100 defines 'process' as including method. One of the examples is a method of using a computer to display images from X-ray scans. Diehr should mean that the computer part of the method should only be protected as part of the specific production of the displayed image. The example suggests that the process of producing any image produced by using the law of nature of X-rays and processing the X-ray image data is protected by the patent. It's a bit like Diehr claiming protection of the production of any heat moulded product and not just the inventive concept of using the math for cured, precision, rubber components. The USPTO failed to consider Flook. They missed the points that there is nothing new about displaying electrical signals generated by passing X-rays through a body on a display screen. There was nothing new about processing image data on a computer and displaying a more informative image. The math algorithms used to do this were not new. They should have come to the same conclusion as the Supremes:
Here it is absolutely clear that respondent's application contains no claim of patentable invention. The chemical processes involved in catalytic conversion of hydrocarbons are well known, as are the practice of monitoring the chemical process variables, the use of alarm limits to trigger alarms, the notion that alarm limit values must be recomputed and readjusted, and the use of computers for "automatic monitoring-alarming."

Respondent's application simply provides a new and presumably better method for calculating alarm limit values. If we assume that that method was also known, as we must under the reasoning in Morse, then respondent's claim is, in effect, comparable to a claim that the formula 2(pi)r can be usefully applied in determining the circumference of a wheel.

As the Court of Customs and Patent Appeals has explained, "if a claim is directed essentially to a method of calculating, using a mathematical formula, even if the solution is for a specific purpose, the claimed method is nonstatutory."
I think you are right that 'reciting' is an element of the legal patent art.
I think it means that a mathematical algorithm is included in the claim, though the claim may well include other non-mathematical elements.
Diehr makes it clear that the claim of the mathematical algorithm executed on a computer is only protected as part of the whole process or method. As we have discussed, before, the courts take each claim as an invention in its own right and permit it to be protected with damages of beeeelions of dollars.

Finally, I draw your attention to the following Guideline examples:
Examples of this type of claimed statutory process include the following:

  • A computerized method of optimally controlling transfer, storage and retrieval of data between cache and hard disk storage devices such that the most frequently used data is readily available.

  • A method of controlling parallel processors to accomplish multi-tasking of several computing tasks to maximize computing efficiency.
  • These are both methods of constructing a machine (in the eyes of the Supreme Court and not in the eyes of most Groklaw readers). The method of making the machine is to install software on a general purpose computer that 'executes' the method. §100(b) says:
    (b) The term “process” means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.
    Which means that a process or method of manufacture or achievement may involve the use of a known machine such as an existing general purpose computer.

    §101 says:
    Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title
    The examples are contrary to the law in that they suggest that machines produced by a patented method are themselves protected by the patent. It's like saying that the precision, moulded, rubber components in Diehr are protected by the patent.

    All this avoids the other issue that installing software on an existing general purpose computer does not produce a patent protectable new and improved machine.

    ---
    Regards
    Ian Al
    Software Patents: It's the disclosed functions in the patent, stupid!

    [ Reply to This | Parent | # ]

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