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[jimargyle]

I'm having trouble with 101 on a method involving fitting data to an algebraic model.  Use of a computer is implied.  If you are really interested, it's published on PAIR, 10/908,834.  Beginner's error: I failed to include any computer hardware incantation in claims, or in the specification.  By my reading of MPEP 2106, fitted parameter values in the context of the invention constitute a useful tangible concrete result, but saying that to the examiner (who is cooperative) brings mutterings of "Bilski" (he says he isn't allowed to cite Bilski, it's not in the MPEP, but it will get me anyway).  I may have this wrong, but this is how I see my options:

1) Continuation in Part in which I do something as trivial as use the words "computer" and "output device" in the specification and claims.  I assume that if I just edit the claims without a new specification "computer" will be see as new matter despite implied presence in the original specification.

2) Try to argue (Bilski or no Bilski) that the claim includes a useful, concrete tangible result that is not a physical object (a set of parameter values which may be used like a diagnostic test).

3) Argue "fitting engine" which I do use in the specification is a "means of" equivalent of "computer".  Pretty shakey?

My thanks to anyone kind enough to offer comment on this.

[JimIvey]

This is one of those things that might be difficult to fix after filing.  The closest analog I've worked on was a resampling algorithm.  The claims were mostly mathematical steps.  Very hard to get through, even under the older, almost sane rules.  Caveat:  this was a long time ago, back when the Office followed its own guidelines.  It's much harder to do this now as the Office seems unwilling to be bound to its own opinions and guidelines.  Hurray for the Unitary Executive!!

My solution was to make clear in both the specification and the claims that the claimed invention fell clearly within one of the accepted categories of eligible subject matter -- the one in which the claimed invention transformed one thing into another thing.  My claim preamble was something like "A method for transforming a digital signal having a first sampling rate to a resulting digital signal having a second sampling rate that is different from the first sampling rate, the method comprising: ... ."

As for Bilski, I don't have much nice to say about the decision.  As far as I understand the decision, any computer-implemented invention that is not implemented by a computer is not eligible subject matter for patent protection under Section 101.  I'm still trying to grok that, but close to just dismissing it as absurd.

Regards.