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Author Topic: Hardware and Mathematical Process Claims  (Read 895 times)

patag2001

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Hardware and Mathematical Process Claims
« on: 03-20-08 at 02:26 pm »

I’m writing method claims that manipulate data.  For example, the process could be used in a DSP receiver, such as performing a FFT, filtering a portion the spectrum and the like.

Is there a need to refer in the claims to the hardware doing the process (i.e., computer)? For example: A method of processing a signal on a computer, comprising.............................. Or, does "A method of processing a signal, comprising:" suffice?

Thanks!
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patentsusa

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Re: Hardware and Mathematical Process Claims
« Reply #1 on: 03-22-08 at 11:51 pm »

As long as you satisfy 35 USC 101, you do not need to recite what hardware component performs what step.  Satisfying 101 is a moving target, though.  To be safe, I'd personally put some hardware somewhere in at least one step of an independent claim, particularly after In re Comiskey.  If you want to try a claim without any hardware, I'd make sure there is a tangible result of some sort a la State Street.  Reasonable minds can differ on 101 issues.  There is a possibility of your case being examined by unreasonable minds.  I don't think the full CAFC has reached a decision on Bilski yet (i.e., 101 is still in flux). 

My first impression is that it might make it through without a 101 rejection.  "Filtering" sounds like something that would be done with hardware, e.g., a filter.  That doesn't mean that it would survive a validity challenge in 5 years, though.  I'd write it a couple of different ways.  I'd also throw in a hardware independent claim; e.g., "a filter configured to..." or "circuitry configured to ...." as well as a "means for" independent claim. 

The USPTO wonders why we need so many claims.  It is because the CAFC keeps changing the law and we need to hedge our bets.

Good luck.
« Last Edit: 03-23-08 at 12:05 am by patentsusa »
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Deepak Malhotra, JD, BSEE, Patent Attorney
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