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[MYK]

How badly does this impact software patents?  I confess I've only skimmed summaries, but it seems to limit things pretty badly.

[JimIvey]

This decision appears to have fallen from the posterior portions of a horse.

It pays some lip service to the SCt and then heads straight for the overturned M|T test, but even screws that up.  The rule was whether the method required a particular machine.  Now, it's whether the method is wholly implemented in a particular machine.

So, you can use particular machines to capture and report IP/e-mail addresses associated with credit card transactions and map them out, but if you can print out the information and let a human make the ultimate decision in just one step of the claimed method, no need to consider just how novel and non-obvious the claimed invention might be.  Of course, having a human perform one step of a method doesn't disqualify the method if it's in any other technology -- just computers.

But wait, there's more...

Suppose you craft the claim such that all steps must be performed by a particular machine -- a general-purpose computer that is, as a matter of law, transformed into a special-purpose computer (i.e., particular machine) by use of a computer-readable medium with code stored thereon to cause that transformation.  Sorry, not good enough.  Yeah, you only failed 101 because a step could have been performed without a machine, but modifying the claim to require the machine for all steps doesn't erase the claim's history of once having a step that didn't require a machine.

Now, to make it reversal-proof.  Cite SCt authority about "too abstract" and say the claims are "too abstract."  Done.

Garbage.  The only thing I can think of is to appeal everything and hope some sensibility returns to the law by the time the appeal is taken up.

Regards.

P.S.  Here's the decision.

[MYK]

Are they *really* saying that "any method claim which can be performed by a human mind" -- no matter that it would take a century or more -- is unpatentable now?  No matter whether the claim states something along the lines of "when done by a program on a computer", or something like that.

Sure, a human *could* use a pen and paper, and maybe a pad of lookup tables, to scribble out the numbers for graphics transformations -- say, one of the fractal terrain generators for the backgrounds to a lot of today's video games -- but not in a timeframe that would be useful to anyone.

[JimIvey]

Are they *really* saying that "any method claim which can be performed by a human mind" -- no matter that it would take a century or more -- is unpatentable now?  No matter whether the claim states something along the lines of "when done by a program on a computer", or something like that.

Sure, a human *could* use a pen and paper, and maybe a pad of lookup tables, to scribble out the numbers for graphics transformations -- say, one of the fractal terrain generators for the backgrounds to a lot of today's video games -- but not in a timeframe that would be useful to anyone.

I don't think it says that, at least not explicitly.  But the analysis is that the entire method, not just one of the steps, must by implemented in a particular machine.

"the plain language of claim 3 does not require the method to be performed by a particular machine" (emphasis added)

"Regardless of whether 'the Internet' can be viewed as a machine, it is clear that the Internet cannot perform the fraud detection steps of the [entire] claimed method." (emphasis added)

Here's the part I probably have the biggest problem with:  "The Internet is merely described as the source of the data. We have held that mere '[data-gathering steps] cannot make an otherwise nonstatutory claim statutory.'"

First, I don't believe that rule has been previously applied to the machine or transformation test.  That was from determining whether a claim recited substantially no more than a mathematical algorithm under Walter-Freeman-Abele. 

Second, the citation of the rule completely overlooks the holding of Abele that mere data gathering doesn't mean any and all data gathering.  Data entry by a human operator isn't sufficiently significant to avoid a conclusion that the claim recites no more than a mathematical algorithm.  However, merely reciting that the number represents density (or some property) of human bodily tissue is enough to tie the algorithm to substantial physical activity -- e.g., using a CAT scan device.  The fact that the Internet (in Cybersource) must exist and act for the underlying data to exist gets around the "mere data gathering" objections of the law prior to Cybersource.  If the Federal Circuit intended to modify that aspect of the law, they should have clear said so and should have made their legal rationale clear and explicity.

Regards.

[Yak]

I just read Ultramercial v Hulu this morning and then Cybersource after reading this post.  I am having a little bit of a hard time differentiating the reasoning of the two. 

http://www.cafc.uscourts.gov/images/stories/opinions-orders/10-1544.pdf

[JustAnotherExaminer]

The decision has the right result, not sure about the logic it went through.

The claim in question:
3. A method for verifying the validity of a credit card transaction over the Internet comprising the steps of:
a) obtaining information about other transactions that have utilized an Internet address that is identified with the [] credit card transaction;
b) constructing a map of credit card numbers based upon the other transactions and;
c) utilizing the map of credit card numbers to determine if the credit card transaction is valid.

For this statement: "Regardless of whether "the Internet" can be viewed as a machine, it is clear that the Internet cannot perform the fraud detection steps of the claimed method."

I think they really meant to say that the Internet does not necessary need to perform the claimed steps, not that it cannot.

I see stuff similar to this frequently and it always gets the 101hammer.  The steps are related to computers or use information about computers, but don't say the step is being performed by a device.

Sort of like... Assigning an address to a computing device.
Can this be infringed by a human thinking? Yes, therefore abstract.

The beauregard analysis was interesting.  The PTO has been chomping at the bit to shift to a 101 analysis policy like the one in this decision.

[Blutarsky]

I just read Ultramercial v Hulu this morning and then Cybersource after reading this post.  I am having a little bit of a hard time differentiating the reasoning of the two. 

http://www.cafc.uscourts.gov/images/stories/opinions-orders/10-1544.pdf

I have been using the Research Corp. holding for the last few responses I have drafted relative to 101 rejections, namely:

“Inventions with specific applications or improvements to technologies in the marketplace are not likely to
be so abstract that they override the statutory language and framework of the Patent Act.”   Research Corp., 627
F.3d at 869."

I am glad to see that it has been reapplied in Ultramerical.  I have a feeling that this will eventually become the prevailing analysis for 101 and a quick and efficient death for the "abstract idea" rejection that has now replaced its predecessor the MoT rejection.

[khazzah]

I have been using the Research Corp. holding for the last few responses I have drafted relative to 101 rejections, namely:

“Inventions with specific applications or improvements to technologies in the marketplace are not likely to
be so abstract that they override the statutory language and framework of the Patent Act.”   Research Corp., 627
F.3d at 869."

True enough, and useful, as far as it goes. But didn't the Cybersource invention also have a "specific application or improvement to technologies in the marketplace"? Or is the answer: No, it didn't, because it didn't actually claim technology, ie, a computer implementation. But wait, that can't be the right answer, because the claims in RCT didn't actually claim technology either, did they?

[khazzah]

I have been using the Research Corp. holding for the last few responses I have drafted relative to 101 rejections, namely:

“Inventions with specific applications or improvements to technologies in the marketplace are not likely to
be so abstract that they override the statutory language and framework of the Patent Act.”   Research Corp., 627
F.3d at 869."

I'm curious ... are you going further than citing RCT for this holding, to actually explain how your rejected claims have "specific application or improvement to technologies in the marketplace"?

[Blutarsky]

I have been using the Research Corp. holding for the last few responses I have drafted relative to 101 rejections, namely:

“Inventions with specific applications or improvements to technologies in the marketplace are not likely to
be so abstract that they override the statutory language and framework of the Patent Act.”   Research Corp., 627
F.3d at 869."

I'm curious ... are you going further than citing RCT for this holding, to actually explain how your rejected claims have "specific application or improvement to technologies in the marketplace"?

I recite the elements of the claim, generally telling the examiner to go back and read the embodiments disclosed in the spec and argue that one of ordinary skill in the art having present disclosure before them would recognize the specific application.  It may even help to make a broad statement about the field of technology, with a reminder that the description is not meant to be limiting in any way, but merely an exemplary application of the technology.

I also argue that the claims, read as a whole, are directed to functional and palpable applications in the field of computer technology. (Yet another gem from the RTC decision)

[Blutarsky]

I have been using the Research Corp. holding for the last few responses I have drafted relative to 101 rejections, namely:

“Inventions with specific applications or improvements to technologies in the marketplace are not likely to
be so abstract that they override the statutory language and framework of the Patent Act.”   Research Corp., 627
F.3d at 869."

True enough, and useful, as far as it goes. But didn't the Cybersource invention also have a "specific application or improvement to technologies in the marketplace"? Or is the answer: No, it didn't, because it didn't actually claim technology, ie, a computer implementation. But wait, that can't be the right answer, because the claims in RCT didn't actually claim technology either, did they?

I think that some of the claims did include technology, and the presence of those claims only reinforced the Court's opinion that there were specific applications of the technology.  Maybe a good practice tip is to include a dependent that has specific structural limitations.

[JimIvey]

I just read Ultramercial v Hulu this morning and then Cybersource after reading this post.  I am having a little bit of a hard time differentiating the reasoning of the two. 

http://www.cafc.uscourts.gov/images/stories/opinions-orders/10-1544.pdf

I don't think the decisions can be reconciled.  If you read Ultramercial, you think the Supreme Court really discouraged used of M|T for computer implemented inventions.  If you read Cybersource, you think use of M|T exclusively for computer implemented inventions is fine as long as you also use the magic incantation of "too abstract" and touch the icons of Benson, Flook, and Diehr.

Regards.

[JimIvey]

For this statement: "Regardless of whether "the Internet" can be viewed as a machine, it is clear that the Internet cannot perform the fraud detection steps of the claimed method."

I think they really meant to say that the Internet does not necessary need to perform the claimed steps, not that it cannot.

Yeah, but that's not the law (prior to Cybersource).  In re Abele is a great example of what "mere data gathering" steps are.  Two claims where at issue and differed only in the one processed a number and the other processed a number than represented the density of human tissue (or some property of human tissue).  The latter was statutory; the former was not.

Mere data gathering is thinking of a number and typing it in.  If you have to use a particular machine or transform matter to get the number, it's not "mere data gathering" as used in 101 law.

So, how are you going to get IP addresses of other sales transactions conducted through the Internet without the Internet or using a particular machine to get the addresses?  In the plain meaning of the claim to one of skill in the relevant art(s), you're not; the Internet is required.

Regards.

[JustAnotherExaminer]

If every step of a method can be performed mentally by a human, it is abstract.

You're arguing that the obtaining step must inherently involve a particular machine and, via the Bilski decision, the method is therefore not abstract.

But, the obtaining step of the method is the only step of method that is tied to a particular machine.  However, the obtaining step is just that, obtaining information. It's a textbook "mere data gathering" step.