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[Trubblemaker]

Art,

I like the binary string concept toward bringing a song recording into patentable subject matter. However, can you be sure real songs are recorded as simply as a single contiguous binary string? Do you know that recording formats are that simple and are that uniform? I don't know that they are ... I don't know that they aren't.

I doubt there will be sufficient breadth to such a claim to warrant prefering patent protection for a song. One bit change may work around your protection without audibly changing a recording.

Have you seen Andrew Knight's patent applications?
Application numbers 10/846,544 and 10/861,849 (there may be more) attempt to patent processes for relaying stories. The steps in the processes relate to the elements of the story plots.

He appears to be trying to bring story plots into patentable subject matter with some breadth to his approach.

His work is food for thought.

[Art]

I agree with you that a binary string may be to simplistic, it was just a quick shot to show the possibilities. It will take more thinking but I believe it can be done. Beauregard's claims definitely opened the door to potential patent claims for protecting a copyrighted material stored on a medium.

Thank you for the references to Andrew Knight's applications.  I will definitely try to find out more on the subject.

[Isaac]

I agree with you that a binary string may be to simplistic, it was just a quick shot to show the possibilities. It will take more thinking but I believe it can be done. Beauregard's claims definitely opened the door to potential patent claims for protecting a copyrighted material stored on a medium.

I disagree.  What you've shown is that a file format may be protected.   For example the mpeg format is protected.  However the copyrighted material stored in mpeg format might be expressed in any number of other formats and in those formats, the content would not be protected by the patent.   Would that be adequate protection for you?    

The patented format could be converted to a non patented format overseas and then shipped back to the US as information.  Not even 35 USC 271(g) would be effective to stop this work around as long as only information were imported.

[Art]

I like Isaac's healthy skepticism.

That's what a good patent attorney should do, question and challenge the subject from every angle to uncover potential holes and devise the best possible protection.

However, if not the fact that taking wagers online is illegal I would take on Isaac's challenge on this one........though maybe we could work it into an agreement of work for hire with a performance guarantee ....

[datuk]

I received a rejection based on IPXL by an examiner.

For example:

A system comprising :

a host server having at least one memory region for storing executable program codes;

a processor for executing the program code stored in the memory, wherein the program code further comprising:

code for sending a picture to a device; and

code for receiving a picture from said device.


The examiner remarks, "applicant recites a processor for executing program code followed by a list of non-functional descriptive method steps, wherein
data is stored but fails to alter the structure in any way. Applicant's claim is directed to a system and therefore reciting steps in conjunction with "said device" renders the claim indefinite."

Firstly, can't  see why is there non-functional steps when the processor for executing them ? Secondly, the examiner's reasoning is that by 'reciting steps' is sufficient to bring in IPXL which as far as I understand and reading from the treads here, is NOT the case.

CK

[JimIvey]

I'm not sure what IPXL is, but I think the examiner's wrong.  I've been getting claims like that allowed for 15 years now.  Well, the claims I write are a little different.  

First, I think you have antecedent basis problems with "executable program codes" and "the program code".  You've also got "wherein the program code further comprising" -- I'd say "comprises".  

But, ignoring all the Section 112 stuff, I tend to tie the method closer to the computer by reciting something like "wherein the executable program codes include a whatchamacallit module that executes in the processor from the memory and, when executed, causes the computer to <do stuff> by: ... <method steps>. "  I suppose the reason I chose that form was to enable simple copying and pasting of my method steps in the "computer system" type claims.

It's been a while since I've addressed this type of rejection, but the relevant case once upon a time was Arrhythmia Research -- an appropriately programmed computer is an apparatus and therefore is elligible subject matter for patents in Section 101.

Regards.

[Isaac]

The examiner remarks, "applicant recites a processor for executing program code followed by a list of non-functional descriptive method steps, wherein
data is stored but fails to alter the structure in any way. Applicant's claim is directed to a system and therefore reciting steps in conjunction with "said device" renders the claim indefinite."

The issue I'd have with the claim is that no matter how detailed the description of the functionality of the code is, as claimed the code is not actually related to the invention in any way other than that the code is storable in the memory.   You don't claim the memory as actually holding any code.  In theory your claim could be rejected using any reference  describing a host server system having a big memory that could hold executable instructions.

If I were examining the claim, I'd issue a 35 USC 112 2nd rejection for failure to claim what you probably described in the specification as the inventive system,  and I'd base any 102/103 rejections on what I really thought you meant.

The examiner's rejection is a bit cryptic, and maybe a little off target, but it doesn't seem to be a 35 USC 101 rejection.

Using the claim form suggested by Jim would address this issue.

I don't know what IPXL means.

[datuk]

My apology for some reasons I could not post IPXL versus Amazon dot com (77 USPQ2d 1140) as this system considers this a URL link, and rejected the posting a few times.

Initially, I was thinking to amend it to ( I was reading Patent 7016860 at claim 11 as a guide)

A system comprising :

a host server adapted to send and receive pictures to a device.

However, I notice that whenever I use the word "adapted to" the examiner consider this as language that suggests or makes optional and pointed me to MPEP 2106 and I quote exactly as the examiner quoted from MPEP ( at II.C - Review of Claims ) " The subject matter of a properly construed claim is defined by the terms that limit its scope. It is this subject matter that must be examined. As a general matter, the grammar and intended meaning of terms used in a claim will dictate whether the language limits the claim scope. Language that suggests or makes optional but does not require steps to be performed or does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation. The following are examples of language that may raise a question as to the limiting effect of the language in a claim:


(A) statements of intended use or field of use,

(B) "adapted to" or "adapted for" clauses,

(C) "wherein" clauses, or

(D) "whereby" clauses."

The examiner did not reason how using adapted to is optional and merely cut and paste the entire MPEP above for me to digest/respond.

On second thought, if I amend as below

A system comprising :

a host server having at least a processor to execute program code stored in memory and when executed, cause the computer to perform something by:

sending a picture to a device; and

receiving a picture from said device.

But wouldn't this fall into the IPXL trap, another reader was pointing out earlier. In fact, from the language of the examiner, I believe he was counting oncombining apparatus and method in one as a proper rejection.

On the other hand, I was reading a submission by the American Bar Association (ABA)in regards to Interim Guidelines for Examination of Patent Applications for Patent Subject Matter Eligibility (published Nov 2005) where, ABA sought clarification for the IPXL decision and even included an example as below:

For example, the following claim is an example of what could be considered improper:

1.A system for analyzing financial transactions, comprising: a network; and
a processor, the processor using the network to determine whether the financial transaction should be allowed.

Such a claimcould be considered improper because it recites elements of a systemand one of the elements is performing a process. In other words, the process itself is effectively an element of the claim,resulting in a claim improperly reciting in its body a combination of elements (network and processor) and a process step (using the network). In contrast, the following claim is proper because it recites elements of a system, one of which is further defined to have certain functionality:

1.A system for analyzing financial transactions, comprising: a network; and
a processor, the processor configured to use the network to determine whether the financial transaction should be allowed.


For the complete submission go to USPTO dot gov,web,offices,pac,dapp,comments,ab98,aba-ipl dot pdf

replace comma to forward / and dot with .

I could not paste the link as this system consider it as spam.

In view of this, perhaps I could amend mine to

A system comprising :

a host server having at least a processor configured to send a picture to a device and receieve a picture from said device.


CK

[Isaac]

A system comprising :
 
a host server having at least a processor to execute program code stored in memory and when executed, cause the computer to perform something by:
 
sending a picture to a device; and
 
receiving a picture from said device.
 
But wouldn't this fall into the IPXL trap, another reader was pointing out earlier. In fact, from the language of the examiner, I believe he was counting oncombining apparatus and method in one as a proper rejection.

While this accurately interprets what the examiner said, I don't believe that it is suggestive of what you need to do to address the problem.

The problem here in the rejected claim is that the claim recites only a server having a processor.    The processor must be capable of executing code carrying out the recited method steps, but *any generic processor* could execute the code described were that code to be stored memory.  

In other words, as claimed, the described the code does not specify functional or structural details of the system of server and processor.

Because of the lack of linkage between the code and the server/processor, the examiner decided that the method and the apparatus were separately claimed elements.   I believe this part of the examiner's remarks are more confusing than enlightening.

Change the claim to recite the following:

a host server having a processor and a memory storing program code, the program code when executed by the processor causing the xxxx to <do stuff> by: ... <method steps>.

Because a memory storing the described program code is structurally different from a memory not storing the code, you have properly claimed an element of a system for which the examiner must give the method steps patentable weight.

The problem is one of form rather than substance, but an examiner who lets this stuff go is not doing you any favors.  

The example claims have a number of antecedent basis problems.   My comments do not address those.