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[sharanbr]

Hi,

I have been working on an idea that is related to my domain. The idea revolves essentially about an algorithm
that is used to generate some pattern that is later compiled and used. Meanwhile, while going through some
math book, I found that some of the steps I am doing pretty much match what is described in this book.
I did not find it very surprising since the problem I was trying to solve using algo is very common and hence
many people would have thought about it. However, the algo I am using is just a part of the overall solution.
For example, if there are steps 1-10 then the standard algo is used in step 4-6 and step 1-3 and 7-10 are
required for complete solution. I would assume even though I am using a solution that is public domain, I am
not providing that itself as a solution but I am adding further steps to do that. So, is this patentable?

Regards,

[mk1023]

35 U.S.C. 101 Inventions patentable.
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.

You appear to have a computer implemented method which likely can be claimed in a way to avoid a 101 rejection. A 103 rejection is probably what you would be concerned about. Just about every invention takes stuff from the public domain. They key is whether you provide something beyond that. Are steps 1-3 and 7-10 novel? If somebody else implements 1-3 and 7-10 with a different 4-6 that is maybe a lesser version of your 4-6, then you'd be headed for an obviousness rejection.

[GRS Research]

If somebody else implements 1-3 and 7-10 with a different 4-6 that is maybe a lesser version of your 4-6, then you'd be headed for an obviousness rejection.

MK is right on, obviousness is going to be the thing to watch out for, especially in light of the KSR decision which refocused attention on what would have been obvious to those skilled in the art. Software patents have always been a mine field and now a thick fog is setting in...step carefully.

[sharanbr]

Thanks Mk, GRS. However, I have further questions on your below comment:

"If somebody else implements 1-3 and 7-10 with a different 4-6 that is maybe a lesser version of your 4-6, then you'd be headed for an obviousness rejection"

When you say lesser version of 4-6, I guess you are talking about a better solution. If that is correct, I was told that an idea need not be better than what is already available. It just has to be novel and obvious. In fact, I would say that better is a very subjective term and can  be used only in a certain context. To give a practical example, there are lot of algorithms that try to optimize the code. But we also know that lot of these compact programs also take lot of compilation time (due to optimization algos applied). For someone who is looking for quicker compilation and does have a problem in having a larger code, then the most compact code would be the worst one for him.

I have another question: when I file a patent, can someone say that we have always been using this internal to our company. Its only that we never thought of patenting it?

Regards

[GRS Research]

I'll start with the standard boilerplate, I am not an attorney, I'm a patent researcher, so take my opinions with that in mind and cautiously wait for the JDs to weigh in. I'd agree that typically the term "better" is subjective but, I believe,  this compact between the government and the inventor is such that the inventor receives a limited monopoly to profit from his or her invention in exchange for fully disclosing to society this 1) novel 2) not obvious and 3) beneficial or art advancing innovation. Not a status quo technology or an obsolete system, but a solution to a problem that improves upon all other solutions. When one reads a patent, that is the way they are written..."here is the problem and how all these others have failed addressing it until now"

can someone say that we have always been using this internal to our company. Its only that we never thought of patenting it?

Regarding your second question, I'll wait for one of the attorneys to offer some insight into that.

[Fathead]

I am also looking for an answer to the second question, ( previos post )