Tuesday, January 31, 2012

Tatsumi scores hollow victory

Photographic Studio of Lonely Objects without a Subject, MOMA (Museum of Modern Art), San Francisco, California, USAIn Ex Parte Tatsumi, No. 2009-011625 (BPAI Jan 24, 2012) we saw the appellant Fuji Photo Film Co., Ltd. overturn an examiner's rejection to non-statutory subject matter.  The invention related to a computer graphics system that simulated conditions and effects produced by actual photographic studios.

Claim 8 of US Patent Application 10/948,845 read as follows:
8. A computer graphics program for creating image data for displaying a three-dimensional image of an object created in a virtual three-dimensional coordinate space on a screen of a display device as a two-dimensional image, running on a computer graphics system including the display device and a computer, said computer graphics program comprising the procedures of:
causing an operational section of a computer to model said object based on shape information of the object having been set through inputting to obtain object model data;
causing the operational section to render said object model data based on positional information of said object in the virtual three-dimensional coordinate space, surface information of said object, inputted information on a light source, lighting member information on a lighting member for controlling light incident on said object before said light reaches said object in accordance with a name of said lighting member, information on optical characteristics of said lighting member, wherein said optical characteristic information on optical characteristics of said lighting member includes information on optical dependency of light transmitted or reflected from said lighting member on an incident angle of light on said lighting member, and positional information of said lighting member in the virtual three-dimensional coordinate space, said positional information on said lighting member being different from said positional information of said object; and
causing the display device to display a rendered object model on a screen of the display device as the two-dimensional image based on image data obtained from the rendering procedure.
Computer program per se

The examiner had earlier objected that the rejected claims were directed to a computer program per se. This sort of subject matter does not fall within a statutory category of invention.

The claimed computer program, according to the examiner, was not tangibly embodied on a computer readable medium that would allow it to impart functionality into the graphics system. It was therefore descriptive material per se.


The Board agreed with the appellant that the examiner had gotten it wrong. The examiner had erred in concluding that the claim language lacked the necessary physical articles or objects that would impart functionality to the graphics system.

Claim 8 specifically required that the computer graphics program run on a computer graphics system including the display device and a computer.

The Board agreed that the claimed running of the program on the programmed computer system causes the program to become structurally and functionally interrelated to the computer system to enable the hardware to perform the claimed functions.

Claim 8 and dependent claims were allowable subject matter.

Further steps

None of the Board's findings on statutory subject matter helped the Appellant very much in the end. The examiner's rejection of all claims as being obvious over prior art was affirmed.

Photo courtesy of author Wonderland under Creative Commons licence.

Monday, January 30, 2012

Gharsalli steam-rolls BPAI

Here kitty kittyIn Ex Parte Gharsalli et al, No. 2009-012500 (BPAI Jan 16, 2012) we saw Caterpillar Inc. appear before the Board of Patent Appeals and Interferences and successfully argue a patentability rejection.  US Patent Application 10/092,333 related to a method and apparatus for controlling a parameter of at least one signal.  Work machines such as motor graders employ several control inputs to control the movement of a work tool, e.g., a grader blade, that is designed to move in multiple degrees of freedom.

Claim 1 for example read as follows:

1. A method for controlling a parameter of at least one signal, including the steps of:

receiving a desired command signal from at least one control input;

determining a potential condition for receiving an undesired command signal from at least one other control input;

adjusting a parameter of an undesired command signal received from the at least one other control input in response to the potential condition; and

delivering the desired command signal and the undesired command signal to at least one output.
The examiner had rejected this claim and dependent claims as being directed to non-statutory subject matter.

The examiner's wrong

The examiner, according to the Appellants, had said the "signal" of the claims is an abstract idea. In making this observation the examiner was asserting that a "signal" is not a physical object and that the claimed subject matter is not a practical application thereof.

No legal or factual basis was provided to support this allegation.

The Board agrees

The examiner's rejection, said the Board, provides no explanation as to why a claim that recites process steps and non-abstract physical elements (for example a control input such as a joystick or lever) is directed to non-statutory subject matter on the sole basis that the claim also recites an abstraction (for example a signal) as a portion of a claim.

In other words, it's okay to have both abstract and non-abstract elements in a claim.

Further steps

The hearing didn't go entirely in the Appellants' favour. The Board went on to uphold anticipation and obviousness rejections against many of the claims.

Photo courtesy of author aliag under Creative Commons licence.

Thursday, January 26, 2012

USPTO Proposes Rules to Implement Supplemental Examination

The latest AIPLA Direct Vol. 7, Issue 3: January 25, 2012 contains an interesting snippet about supplemental examination at the US Patent and Trademark Office.

The USPTO recently proposed new rules to implement the supplemental examination provisions of the recently enacted Leahy-Smith America Invents Act.

A new 35 U.S.C. 257 permits patent owners to request supplemental examination for the Office to consider, reconsider, or correct information believed to be relevant to the patent. The statute also authorizes the Office to set fees for the procedure.

Supplemental examination is meant to assist the patent owner in addressing certain challenges to the enforceability of the patent that may be raised during litigation. The information presented in a request for supplemental examination is not limited to patents and printed publications, and may include, for example, issues of patentability under 35 U.S.C. 101 and 112. The procedure is not available to an allegation pleaded in a civil action against the patentee. If the request raises a substantial new question of patentability, the Director must order an ex parte reexamination.

Under Section 257(e), if the Director "becomes aware ... that material fraud on the Office may have been committed" in connection with the patent under supplemental examination, the claims may be cancelled and the matter may be referred to the Justice Department. The Federal Register notice states that the Office regards "material fraud" to be narrower than inequitable conduct under Therasense, Inc.

Written comments on the proposed rule must be received by March 26, 2012.

To read the Federal Register notice, click here.

Wednesday, January 25, 2012

Tayside clears the way

One of the most satisfying outcomes of a European Technical Board of Appeal decision is surely one where you get the outcome you want without even having to participate in oral proceedings.  That's what happened recently in Tayside Flow Technologies (T1909/08).

The claims

European patent application 02785665.7 involved a method of determining the optimum helix angle of a helical formation for a conduit.  Claim 1, for example, read as follows:
1. A method of determining the optimum helix angle of a helical formation (4) for a conduit (1), wherein the optimum helix angle is for minimising turbulent flow and dead spots within flow through the conduit (1), the method comprising specifying the internal dimensions of the conduit (1), characterized by
specifying an intended fluid mass flow through the conduit (1);
measuring the pressure drop along, and the turbulent kinetic energy in, a conduit (1) with a helical formation (4) at a range of different helix angles, wherein the conduit (1) has the specified internal dimensions and intended fluid mass flow;
non-dimensionalizing the pressure drop and the turbulent kinetic energy; and
determining the optimum helix angle from plots of curves of the helix angle versus the non-dimensionalized pressure drop and the helix angle versus the non-dimensionalized turbulent kinetic energy.
The Examining Division refused the claims under several grounds.  One of these was that the claimed method represented a discovery, scientific theory or mathematical method as such (Article 52(2)(a)) or a presentation of information as such (Article 52(2)(d)).

Technical character

The Board observed that the present invention, as defined in claim 1, is clearly of a technical character.  The problem addressed by the present invention is a technical one.  The result of the claimed method, the identification of the optimum helix angle, is undoubtedly a technical result.

The invention, said the Board, enables conduits containing helical formations to be produced in an advantageous manner.

It is not merely a discovery, scientific theory or mathematical method, because the invention is embodied within a method of determining a particular technical matter.

It is not a mere presentation of information, since it involves determining a subject of objective technical significance, namely the optimum helix angle of the helical formation for a conduit.

The invention is not defined solely by presenting a number which has no technical significance.  By carrying out the method of the invention, the optimum angle for the helical formation in order to minimize turbulent flow and dead spots within flow through the conduit is determined.

Further steps

The Board decided there was no need to hold oral proceedings.  The case was sent back to the Examining Division with an order to grant the patent.

Tuesday, January 24, 2012

Subbu and the complex assets

MoneyIn Ex Parte Subbu et al, No. 2010-001444 (BPAI Dec. 20, 2011) we saw the General Electric Company appear before the Board.  The appellants had filed United States application 10/781,805 directed to portfolio optimization  and techniques associated with optimization processing of asset portfolios.

General Electric unsuccessfully argued that their invention satisfied the machine-or-transformation test.

Claim 27, for example, read as follows:
27. A method for multi-objective portfolio analysis using Pareto Sorting Evolutionary Algorithms, the method comprising the steps of:
(a) randomly drawing an initial population of individual portfolio allocations that are generated from a portfolio allocations archive by using a combination of linear programming and sequential linear programming algorithms using a computing device;
(b) passing the initial population of portfolio allocations through a dominance filter to identify a non-dominated subset of parent portfolio allocations;
(c) committing the non-dominated subset of parent portfolio allocations to a non-dominated portfolio allocations archive;
(d) randomly combining matched pairs of parent portfolio allocations to create offspring portfolio allocations;
(e) passing the offspring portfolio allocations through the dominance filter to identify a non-dominated subset of offspring portfolio allocations;
(f) combining the non-dominated subset of parent portfolio allocations with the non-dominated subset of offspring portfolio allocations into a larger set of portfolio allocations;
(g) passing the larger set of portfolio allocations through a non-crowding filter to identify a reduced subset of portfolio allocations;
(h) creating a new population of individual portfolio allocations from the reduced subset of portfolio allocations;
(i) updating the non-dominated portfolio allocations archive with the new population of individual portfolio allocations;
(j) repeating steps (a) through (i) for a plurality of generations; and
(k) passing the updated non-dominated portfolio allocations archive through the dominance filter to generate an interim efficient frontier in a portfolio performance space having at least three-dimensions, the interim efficient frontier being used in investment decisions.
The machine-or-transformation test

The Board acknowledged that the law on patent-eligibility for process claims has undergone significant clarification during the time this case has progressed through the system.

However, failing to satisfy the machine-or-transformation test is a factor weighing against the patent eligibility of a process claim.

It's not a machine

The appellants argued unsuccessfully that the process was tied to a particular apparatus.

The first step of claim 27, they said, was directed to randomly drawing an initial population of individual portfolio allocations that are generated from a portfolio allocations archive by using a combination of linear programming and sequential linear programming algorithms using a computing device.

They asserted that it was impossible for the human mind to perform these steps.  It was just too tricky.  A computing device was necessary to perform all these complex steps.

But, said the Board, the computing device only appears in the first step of claim 27.  No other step requires it.

Even so, the computing device is only used for what amounts to a data gathering step.  The appellants conceded that an insignificant step, such as data gathering or outputting, is not sufficient to pass the test.

The appellants did not explain why the use of the computing device was not insignificant.  They didn't submit any evidence that the complex steps were impossible for the human mind to perform.

It's not a transformation

The appellants argued unsuccessfully that the invention of claim 27 transforms the underlying subject matter to a different state or thing.  They said that claim 27 transforms a non-dominated portfolio allocations archive to an updated non-dominated portfolio allocations archive.

The term "archive", according to the appellants, means a storage area or compressed file.  Two of the steps of claim 27 transform the "archive".

The Board was not convinced.  The transformation prong of the test involves transforming a particular article into a different state or thing.  The appellants had not explained in what way an "archive" is a specific article.

Even assuming that an "archive" is an article, reasoned the Board, claim 27 does no more than commit allocations to the archive and update the archive with new allocations.  These steps do not transform the archive into a different state or thing.  The archive was left unchanged, though allocations were committed to it and updated with new ones.

The invention as claimed in claim 27 and dependent claims was found to be directed to non-statutory subject matter.  The examiner's decision rejecting the claims under this ground was affirmed.

Photo courtesy of author images_of_money under Creative Commons licence.

Thursday, January 19, 2012

Korea implements US FTA

KoreaLate last year we saw some progress on the Korea-US Free Trade Agreement.  On 22 November 2011 the Korean National Assembly passed the KORUS FTA Bill.

There are consequential revisions to the Korean Patent Act which are due to take effect this year.  The folks at Korean firm Lee International have provided a nice summary of the changes.

Extension of Patent Term for Examination Delays

Where a patent is registered more than four (4) years from the filing date of a patent application or three (3) years from the filing date of a request for examination, the patent term may be extended for the delayed period.

A delay in registration caused by the applicant will be excluded.

Extension of Grace Period

The grace period in which an inventor may file for a patent application after making the invention public has been extended from six (6) months to twelve (12) months.

Repeal of Patent Cancellation Action for Nonpracticed Inventions

Under the old law a patent could be cancelled where a patentee had not worked the invention for two (2) or more years.  This was a risk even if a non-exclusive compulsory licence had been granted to a third party.

The revisions to the Patent Act repeal this law.

Duty of Confidentiality in a Patent Infringement Lawsuit

The parties in a patent infringement lawsuit, including their attorneys, are required to withhold from disclosing confidential information obtained during the litigation proceedings.

Photo courtesy of author slagheap under Creative Commons licence.

Cromer finds a perfect storm

stormI work in an industry replete with jargon and acronyms.  However, I still occasionally come across an acronym that impresses me.

In Ex Parte Cromer et al, No. 2009-012992 (BPAI Jan. 12, 2012), the appellants' invention related to methods, systems and computer program products that allow a client device to recognize a Wireless Broadcast Storm During Active Scan Association (WBSDAASA).  On recognition of a WBSDAASA the invention initiated an alternate connection scheme with the access point to avoid the access point live-lock caused by the WBSDAASA.

Claim 12, for example, read as follows:
12. A computer program product, residing on a computer usable storage medium, comprising:
program code configured to monitor, when executed by a client device, for a Wireless Broadcast Storm During Active Scan Association (WBSDAASA); and
program code configured to, upon detecting the WBSDAASA when executed by the client device, use an alternate connection scheme to wirelessly connect the client device to an access point of a wireless network.
In other words, almost a Beauregard claim, but not quite.

It's tangible

The appellants, Lenovo Inc, pointed out that they amended claim 12 during prosecution to replace the term "computer usable medium" with "computer usable storage medium".  They also deleted the reference in the specification to "communication media, such as computer and telephone networks including Ethernet".

So, said the appellants, the computer usable storage medium of claim 12 doesn't cover signals under transmission.  Signals are not regarded to be patentable subject matter. But they are not claiming signals here.

It's transitory

The Board had a different view.  The Judges considered that the term "computer usable storage medium" included programs delivered to a data storage system by a variety of signal-bearing media.

The smoking gun was a passage from the appellants' specification:
'Programs defining functions on the present invention can be delivered to a data storage system or a computer system via a variety of signal-bearing media, which include, without limitation, non-writable storage media (eg. CD-ROM), writable storage media (eg. a floppy diskette, hard disk drive, read/write CD ROM, optical media).'
The claim was held to encompass both statutory subject matter (CD-ROM, hard disk drive, etc) and non-statutory subject matter (ie. signal bearing transmission waves) which carry data received via different signal-bearing media such as "transitory" or propagated signals.

The Board referred to the USPTO guidelines which recommend adding the limitation "non-transitory" to the claim.

The invention as claimed was found to be not limited to non-transitory subject matter.  The examiner's decision rejecting claim 12 was affirmed.

Photo courtesy of author Slawek Puklo under Creative Commons licence.

Wednesday, January 18, 2012

Blachowicz and the unpatentable user interface

departures boardBlachowicz et al/Air Routing International, LLP secured US patent 6,754,581 for a system and method for selecting, compiling, retrieving and displaying computer stored air travel data.

The applicants filed additional claims in a reissue application and appealed to the US Board of Patent Appeals and Interferences following a final rejection from the examiner.  The Board decision issued as Ex Parte Blachowicz et al, No. 2012-000321 (BPAI Dec. 21, 2011).

The reissue application contained (among others) claims 112 and 128.  These two claims were directed to a system for managing air flights.  Claim 112, for example, read as follows:
112. A system for managing air flights, comprising:
a graphical user interface on a display for tasks associated with an air flight;
a graphical user interface on a display ...;
a graphical user interface on a display for auditing taks associated with an air flight.
Claim 28 had a similar format.

It's just software

During prosecution, the examiner objected that each of the claims was defined merely by a software component such as a graphical user interface (GUI).  The GUIs were not claimed in a Lowry format as being recorded on a computer readable medium.  As such, the GUIs could not become structurally and functionally interrelated to the medium.

In other words, it was just software.

There were no structural and functional relationships between the computer programs and the rest of the computer as defined in the claims.

A concrete device

The applicants argued  that each claim requires a concrete device, for example a display.  The claims require the use of a tangible display and therefore are not caught by any of the judicially created exclusions to subject matter.

Both claims were directed to a software component (the GUI) that is deployed on a machine (the display).

Incidental use of a computer

It was not enough.  The Board pulled out CyberSource Corp. v. Retail Decisions, Inc. (Case No. 2009-1358) (see my blog post).  No mention of Ultramercial LLC v Hulu LLC (Case No. 2010-1544) (see my blog post).

The applicants did not, according to the Board, advocate that the display imposes meaningful limits on the claimed system of graphical user interfaces. The display, apparently, was just a general purpose machine.  The display was merely incidental to the operation of the graphical user interface. The Board was not persuaded that the claims qualify for eligible subject matter simply by reciting the use of a machine.

The examiner's rejection of claims 112 and 128 was affirmed by the Board.

Photo courtesy of author Lawrie Cate under Creative Commons licence.

Monday, January 9, 2012

Hong Kong looks at patent law reform

Hong Kong
Last year the Hong Kong Government issued a consultation paper on patent law reform.  The submission period ended on 31 December 2011.

Original grant patent system

Hong Kong’s current re-registration system doesn’t suit locals with limited resources who only want Hong Kong patent protection.  Such applicants are forced to obtain patent protection in a designated office outside Hong Kong in order to re-register in their own country.

One of the issues under consideration is whether Hong Kong should introduce an ordinary patent system.  In the paper they give it the rather awkward acronym of OGP (“original grant” patent) system.

Merits of establishing an OGP system

The OGP system would apparently allow inventors who do not need a patent elsewhere to apply direct in Hong Kong.  This may provide convenience and help save costs for inventors who wish to apply for a patent in Hong Kong alone.

It is intended to complement the efforts being made to encourage more entrepreneurs to use Hong Kong as a launching pad for their research and development businesses.  That may in turn help fortify the further development of Hong Kong as a regional innovation and technology hub.

The OGP system may result in more patent applications being filed in Hong Kong direct.  This has the expected benefits of:

  • stimulating the growth of patent agency business in Hong Kong
  • helping build up local expertise in drafting and prosecuting applications for patents, and
  • offering added career opportunities for graduates with science and technical background.

Drawbacks of establishing an OGP system

An OGP system would not help those of us who are just interested in re-registration.  We are already filing in China, Europe or the UK and simply want to extend coverage to Hong Kong.

One solution is to maintain the OGP system and the re-registration system in parallel.  However, this would entail extra cost in maintenance, which will be passed onto users and may make the whole thing less attractive/viable.

In-house substantive examination, in contrast to re-registration, will require the patent office to maintain a large team of examiners and the development and maintenance of a comprehensive technical database for assessing whether an invention is novel and whether it involves an inventive step.

For a small market like Hong Kong, in-house substantive examination may not be viable or cost-effective, as it is likely to result in very high registration fees.

Outsourcing substantive examination

The report acknowledges that introducing in-house substantive examination straight away is not an option.  A more viable short to medium term solution is to outsource substantive examination.

The Hong Kong Patents Registry will do a formality check before sending the application to another patent office for substantive examination.  The Registry will consider the examination report prepared by the outsourced examination authority and then decide whether to grant the patent or not.

Expanding the re-registration system

There are currently three designated offices under the existing re-registration system.  These are the SIPO (Chinese State Intellectual Property Office), the UK Intellectual Property Office and the European Patent Office (for patents designating the UK).

One option is to expand the list of designated offices.  Singapore’s list of designated offices, for example, includes Australia, Canada, Japan, New Zealand, Korea, the UK, the US and the EPO.

There are drawbacks if Hong Kong follows this model.

The paper notes that if the number of designated patent offices is increased, differences in the patent laws of different countries, particularly in respect of patentability standards, the interpretation of claims, as well as the ambit of protection could result in inconsistencies which may be hard to reconcile.

This observation seems to have been lost on New Zealand and Australian politicians and officials who are currently pursuing a single examination system between the two countries despite differences in the law.  I have discussed joint examination in an earlier blog post.

Chinese extension

I don’t claim to be an expert in the relationship between China and its neighbours Hong Kong, Taiwan and Tibet.

So, speaking as an outsider, it seems strange to me that the report does not even mention the possibility of Chinese patents automatically extending to Hong Kong.  That would certainly be advantageous to global users of the patent system.

I guess there are some local sovereignty issues to take into account.

Further steps

We’ll watch with interest what that Hong Kong Government decides to do and to what extent they will be guided by submissions.

If I had to make an informed guess, I would say that the Hong Kong Government will introduce an OGP system with outsourced examination and retain the re-registration system in its current form.

Photo courtesy of author Patrick Rasenberg under Creative Commons licence.

Tuesday, January 3, 2012

Our Nadine hen

It was pretty clear to us that we needed some more hens.  The easiest way to do this was to buy some.  Or we could hatch some eggs.  Now, there's an idea.

There are two ways of hatching eggs.  The first way is to put a clutch of fertilized eggs in an incubator for a few weeks and watch them hatch.  The second way is the old fashioned way: grab a broody Nadine hen and plonk her on top of some fertilised eggs. 

Now I should probably clarify what I mean by a "Nadine hen". Nadine Balling was our au pair at the time I was explaining our plan to the kids.  Nadine helped raise children that weren't biologically hers.  It's the same with hens.  A broody hen is quite happy to sit on a bunch of eggs that she didn't lay herself.

We decided on the old fashioned away of hatching eggs.  We got ourselves a nesting box and set it up next to the hen coop.  I made an attractive looking nest of straw within it and filled it with 12 fertilised eggs.

There were a few hens sitting on eggs.  I gave each a poke.  The hen most reluctant to get off her eggs became our Nadine hen.  I grabbed her between my open palms and pulled her out of the hen coop.  She was doing a lot of squawking and flapping.  I dropped her into the nesting box and our 7 year old slammed the lid down.  Done.

Now we (mostly the Nadine hen) all sit tight and wait for our eggs to hatch.

Eggs for sale

I'm not sure who had the idea of selling eggs at the gate.  Maybe it was my wife's idea.  Maybe it was mine.  It was certainly embraced by the kids as a way of keeping them in Lego.  It sounded good in concept.  The kids would gather the eggs and sell them at the gate.

It's capitalism pure and simple.  Exploitation of voluntary child labour.  Exploitation of feathered animals, even chicken murder when you consider that many of the eggs we sell are potential chickens.

Last year we saw the Occupy Wellington movement fill Civic Square with what has been described as  'homeless streeties, illegal overstayers and reformed crims looking for free food and somewhere to sleep'.  We wondered whether our act of capitalism would prompt a few malcontents to set up Occupy Woodside.

As it turned out, we didn't see any protest tents, and the kids weren't as involved as we initially thought.  Some of our hens are a little broody.  They refuse to move and in fact turn around and peck you when you try and gather eggs.  So egg gathering, feeding, and general care of our small flock remains an adult job.

The kids' job is to race down to the end of the driveway whenever possible and check the money jar for recent sales.  I'll never forget our first sale.  The kids were so excited.  One of the egg cartons was missing.  And $5 was in the jar.

We must be doing something right.  The eggs seem to be literally flying out of the letter box.  We have people driving up to the house looking for more.  Demand is exceeding supply.  We need more hens.
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