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[ARWILLIAMS]

I infer from discussions on this blog that, because the necessity vs sufficiency of the machine-or-transformation test remains unclear, it is wise to "tie" methodogical innovation to a machine.  My question concerns tying.  Is a clearly novel algorithm patentable if it is described in the patent application as implemented on a known technology or machine?  Can the novelty be confined to the algorithm?

Thanks very much, Art Williams

[JimIvey]

That's currently being discussed in great detail here:

Claiming Computer Program As Providing A Useful, Practical Result

Regards.

[MYK]

That's currently being discussed in great detail here:

Claiming Computer Program As Providing A Useful, Practical Result

Regards.

I think you meant this link instead:
http://www.intelproplaw.com/ip_forum/index.php/topic,17970.0.html

[ARWILLIAMS]

I appreciate the quick response, and I can see why you directed me to the topic "Claiming Computer Program As Providing A Useful, Practical Result".  That said, I believe that I'm trying to pose a different question.  I think that it may help if I pose my question using an illustrative example.  The context of the innovative algorithm is control theory.  Consider the thermostatic control of a heater to maintain temperature.  Now suppose that my algorithm comprises an analysis of the time history of the heater and the temperature, that enables more precise temperature control.  The novelty is confined to the algorithm.

I understand the consensus to be that I cannot patent the algorithm with no mention of the heating system.  Right? 
Assuming adequate novelty, will a claim not mentioning the heating system be allowed?
A related, and more important, question is: Can I protect the exploitation of algorithm in other contexts, such as automobile speed controllers, aircraft autopilots, etc.?

Thanks again, Art Williams

[JimIvey]

I've got 20 years' experience doing pretty much exactly what you're asking.  There's no quick fix.  Each case requires adopting good strategy custom fit for the particular technology.  That discussion at that link (thanks, MYK) discusses the law around exactly what you're asking.  And, as you might gather from that discussion, that area of the law is still evolving and the Patent Office doesn't always follow it the way others think they should.  So, please don't expect straight "Yes" or "No" answers.

I understand the consensus to be that I cannot patent the algorithm with no mention of the heating system.  Right? 

I would disagree, but there isn't consensus for the opposite conclusion either.

Assuming adequate novelty, will a claim not mentioning the heating system be allowed?

Maybe.  There are far too many variables to even guess. 

A related, and more important, question is: Can I protect the exploitation of algorithm in other contexts, such as automobile speed controllers, aircraft autopilots, etc.?

Probably.  It's easier if you file separate claims for each of those contexts.  A context-independent claim will be more challenging.

Regards.

[khazzah]

I understand the consensus to be that I cannot patent the algorithm with no mention of the heating system. Right? Assuming adequate novelty, will a claim not mentioning the heating system be allowed?

The only real limit on patentable subject matter is that according to Bilski v. Kappos, the claimed subject matter can't be "abstract". We're all still trying to figure out what the Supreme Court meant by "abstract".

As a practical matter, if you put a "specific machine" in your claims, you reduce the likelihood of the PTO issuing a 101 rejection. A heating system is more specific than a computer.

There are no absolutes here. I predict that some Examiners will reject a heating system. Some will not.

A related, and more important, question is: Can I protect the exploitation of algorithm in other contexts, such as automobile speed controllers, aircraft autopilots, etc.?

Same rule (can't patent abstract), same answer (who knows).

If your decision to move forward with a patent doesn't hinge on the answer to this question, perhaps the best approach is to include different claims with different scope, ie some directed to a computer implementation, some directed to a heating system implementation, some directed to implementation in a vehicle, etc. etc. Your application won't even be examined until 2-3 years from now -- who knows what sort of claims the PTO will be allowing then.

[ARWILLIAMS]

Thanks Folks.