Patent It Yourself - PDF Archive

98 | Patent it YOURSELF
b. Software Processes
Since most software-related inventions are claimed as
processes, I’ll discuss them here. However, be aware that
software inventions can also be claimed as machines. As
indicated in Chapter 1, algorithms that merely crunch
numbers without intimately involving hardware cannot
be patented since they are considered abstract ideas. (An
algorithm is a step-by-step problem-solving procedure.)
However, if the software or algorithm affects some
hardware or process, it falls within a statutory class as a
machine or a process. If it merely manipulates numbers
or solves an algorithm, then the PTO will not consider it
within a statutory class. For example, if the process analyzes
EKG, spectrographic, seismic, or data bit signals, controls
a milling machine, creates useful images on a computer
screen, formats the printing of mathematical formulae,
recognizes patterns or voices, or selects stocks that will beat
an index, then it is considered to control hardware and is
statutory subject matter. However, if the process merely
crunches numbers, generates a nonuseful curve, calculates
distances without any hardware involved, or involves a
financing method without involving hardware, then it is
considered to be nonstatutory.
However, the main patent court—the CAFC—determined
that an algorithm for making a smoother diagonal
line on a monitor is statutory subject matter (SSM),
probably because smoother diagonal lines look better and
are easier to see. (In re Alappat, 33 F.3d 1526 (CAFC 1994).)
Also, the CAFC has held (In re Lowry, 32 F.3d (CAFC
1994)) that a general-purpose computer data structure that
organizes information into different categories (selected
from an infinite number of categories) is SSM, no doubt
because humans can control the selection. And while the
court first held that a process for allowing mutual funds to
pool their assets into a partnership for administrative and
tax advantages was held to be SSM because of its practical
utility (State Street Bank & Trust Co. v. Signature Financial
Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998), cert. denied
119 S.Ct. 851 (1999)), the court subsequently changed its
mind (Bilski v. Kappos) and held that hardware must be
substantially involved. See above.
So if you have an invention involving an algorithm, ask if
it substantially involves hardware, like the examples, above.
If so it’s probably SSM. If not, such as if it just calculates the
value of π, or manipulates numbers or shapes for the fun of
it without any practical application, then it’s non-SSM.
c. Internet and Business Method Patents
Until the 1998 court decision in the State Street case (see
just above), the PTO rarely granted patents for methods
Examples of Inventions That Don’t
Fit Within a Statutory Class
The following are examples of “inventions” that don’t fit
within any statutory class and hence are nonstatutory
subject matter that cannot be patented:
• Processes performed solely with one’s mind (such
as a method of meditation or a method of speedreading)
• Naturally occurring phenomena and articles, even if
modified somewhat, such as a shrimp with its head
and vein removed
• Laws of nature, including abstract scientific or
mathematical principles (John Napier’s invention of
logarithms in 1614 was immensely innovative and
valuable, but it would never get past the bottom
level of the patentability mountain. However
Napier’s “bones” (rods used to multiply by adding)
would clearly be SSM.)
• Processes that (1) are not tied in a substantial way
to a particular machine or apparatus, or (2) do not
transform an article into a different state or thing.
See the discussion of the Bilski decision, above.
• An arrangement of printed matter without some
accompanying instrumentality; printed matter per
se isn’t patentable, but a printed label on a mattress
telling how to turn it to ensure even wear, or
dictionary index tabs that guide you to the desired
word more rapidly, have been patented as articles
of manufacture
• Methods that have no practical utility, that is, that
don’t produce any useful, concrete, and tangible
result—for example, a method for extracting π.
However, securities trading systems, credit
accounting systems, etc., involving account and file
postings have been held patentable
• Computer programs per se, naked computer
instruc tions, or algorithms that don't manipulate
hardware such as the algorithm for extracting π
• Ideas per se. Thoughts or goals not expressed in
concrete form or usage are obviously not assignable
to any of the five categories above. If you have an
idea, you must show how it can be made and used
in tangible form so as to be useful in the real world,
even if only on paper, before the PTO will accept
it. For example, an idea for a burping doll can be
effectively patented by patenting a doll with a
burping mechanism.
• Electrical Signals. Transitory electrical signals were
held not patentable subject matter since they are
not a composition or manufacture. (In re Nuijten
(CAFC 2007 Sep 20).)