Patent It Yourself - PDF Archive

ChaPter 5 | Is It PATENTABLE? | 99
of doing business. The PTO reasoned that most business
methods were abstract ideas that it traditionally refused
to patent. But it gradually started granting patents on
business methods and the courts validated this change
in the State Street Bank case. The court ruled that patent
laws were intended to protect any method, whether or not
it required the aid of a computer, so long as it produced a
“useful, concrete and tangible result.” Thus with one stroke
the court legitimized both software patents and methods
of doing business, opening the way for a group of patents
that have been categorized as Internet patents and business
method patents. But, as noted above, the court changed
its mind in the Bilski case, so now software and business
methods are not patentable unless hardware is substantially
involved.
2. Machines
Machines are devices or things used for accomplishing a
task. Like processes, they usually involve some activity or
motion that’s performed by working parts, but in machines
the emphasis is on the parts or hardware, rather than the
activity per se. Put differently, while a process involves the
actual steps of manipulation of an item or work piece (the
machine that does the manipulation is of secondary import),
a machine is the thing that does the manipulating and the
steps or manner of its operation, and the process itself, or
material worked upon, are of lesser import. I like to classify
machines into two categories: conventional and software.
a. Conventional Machines
Examples of conventional machines are cigarette lighters,
robots, sewage treatment plants, clocks, all electronic circuits,
automobiles, automatic transmissions, boats, rockets,
telephones, TVs, computers, VCRs, disk drives, printers,
lasers, photocopiers, and a layout for a bank. In 1998, the
PTO even issued a patent on an electronic signal, by itself,
as a machine (U.S. Pat. No. 5,815,526). Many machine
inventions can also be claimed as a process and/or as a
machine. For instance, an electric circuit or a weaving
machine can be claimed in terms of its actual hardware
and/or as a process for manipulating an electrical signal or
weaving fabrics.
b. Software Machines
As stated in the previous section (“1. Processes, Including
Software”), while most software inventions are claimed and
regarded as processes, they can usually also be claimed and
regarded as machines. For example, a system for controlling
a milling machine according to certain measured parameters
of an object can be claimed and regarded either as a process
or a machine. As a process the system would be regarded
and claimed as follows: (a) measuring an object to obtain a
set of measurements, and (b) controlling a milling machine
according to the set of measurements. As a machine the
system would be regarded and claimed as follows: (a) means
[or an apparatus] for measuring an object to obtain a
set of measurements, and (b) means [or an apparatus]
for adjusting a milling machine according to the set of
measurements.
Note that the first step or “means” (the mensuration
or the means for measuring) can be regarded as either an
action or as the hardware for performing the action. This
applies equally to the second step. Sometimes a software
invention can’t be regarded as a machine; for example,
consider the software inventions defined by the two sample
claims in Chapter 9, Section G13. The two inventions relate
exclusively to process-type inventions and are actually
so close to being all mental steps as to be almost (but not
quite!) non-SSM.
On the other hand, virtually every machine-type
software invention can also be regarded as a process, since
each part of a “software” machine always performs some
action or step. Insofar as possible, both types of claims
can and should usually be provided in a single patent
application. As stated in the previous paragraph, it’s not
important which category (process or machine) you can
subsume your software invention under, and it’s usually
best to claim it both ways.
As stated above, to be considered SSM, a software
invention must now (1) be tied in a substantial way to a
particular machine or apparatus, or (2) transform an article
into a different state or thing.
Tip
As I’ve said, there are no clear lines between the
five statutory classes. The important thing to realize is that it
doesn’t matter as long as your invention fits into at least one
of them. Put differently, you needn’t be able to tell a machine
from a process to qualify for a patent.
3. Manufactures
Manufactures, sometimes termed “articles of manufacture,”
are items that have been made by human hands or by
machines. This excludes naturally occurring things, like rocks,
gold, shrimp, and wood, or slightly modified naturally
occurring things, like a shrimp with its head and vein
removed. But if you discover a new and unobvious use
for a naturally occurring thing, such as a way to use the