Patents

The Law Office of David M. Dingeman provides services in the following areas:

• Patent Searches
• Patent Cooperation Treaty (PCT) Patents
• Design Patents
• Utility Patents

 Introduction

Often, copyright laws and trademark registration are not enough to protect a web site. Authors who have created complex systems, procedures, or programs need patent protection.  Some examples of work that has already been patented for use on the world wide web include:  method for fulfilling requests of a web browser (5701451), mechanism for enabling secure electronic transactions on the open internet (5778173), method for reducing flicker when displaying HTML images on a television monitor, and a system for bill delivery and payment over a communications network. 

2. USPTO Examination Guidelines for Computer-Related Inventions  patent\USPTO guides1.doc

These Guidelines were written to assist USPTO office personnel in examining computer-related inventions. The Guidelines to not constitute substantive rulemaking and are fully consistent with Supreme Court and Federal Circuit holdings.  They are equally applicable to hardware or software inventions. The appendix contains a flow chart of the process personnel will follow in conducting examinations for computer related inventions.

The major steps in analyzing a patent according to the Guidelines are:

a. Determine what the applicant has invented and is seeking to patent. Office personnel must state all reasons for rejecting claims and explain how the rejections may be overcome.  Emphasis is directed toward the complete specification of the invention instead of focusing on whether the invention is a mathematical algorithm.

The invention must have a "real world" value as opposed to something that is merely and idea, concept or something that may happen in the future.  Office personnel are directed to always use the perspective of one of ordinary skill in the art and to give claims their broadest reasonable interpretation in light of the supporting disclosure.

b. Conduct a thorough search of the prior art.   This includes a thorough search reviewing both U.S. and foreign patents including non-patent literature.

c. Determine whether the claimed invention complies with 35 U.S.C. § 101 which provides:

 Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

 

Congress deemed four categories to be appropriate subject matter of a patent: processes, machines, manufactures and compositions of matter.  Courts have found three exclusions of these to be abstract ideas, laws of nature and natural phenomena.

d. Evaluate the application for compliance with 35 U.S.C. § 112

Specifically, whether the claims satisfy paragraph two by setting forth the subject matter of the invention and whether the claims particularly point out and distinctly claiming the invention.  In addition, the invention must have an adequate written description and enabling disclosure.

e. Determine whether the claimed invention complies with 35 U.S.C. § 102 and 103

f. Clearly communicate the findings, conclusions and their bases.

The Guideline Training Materials go through five examples to help in the complexity of computer-related inventions  patent\USPTOexam guide.doc:

a. Mutual Fund – A general purpose digital computer is used to evaluate investment risk factors between numerous mutual funds and optimize investment value to be distributed between the funds.  The patent describes the numerous formulae used to calculate risk factors, distribution amounts, time periods, and performance data on past transactions.  The method is implemented when an investor specifies a dollar amount to be invested. An investor profile is already in the computer along with various mutual funds with corresponding risk ranking factors.  The computer then calculates an optimized disbursement allocation between the various funds based on the investor's profile.

b. Matrix – method of performing matrix multiplication using a general purpose digital computer.  Included in the specification are specific algorithms for manipulating matrices including multiplication of two matrices.  Application of these methods would be used in simulation and optimization of space craft flight paths.

c. Neural Network – Invention discloses a method of training a neural network node using a general purpose computer.  The method uses a sequence of functions carried out in a specific order to achieve the functionality of training a specialized network to a perform a wide range of varied funcions.

d. Triple Precision Arithmetic – This method discloses a series of steps being performed on the general purpose computer to perform the arithmetic addition of at least two triple precision values into a resultant triple quantity.

e. Market Securities – This invention describes a method of determining whether to extend real estate services to a potential customer.  The invention includes a series of steps to be performed on a computer system to provide real time indications of whether to extend real estate services such as insurance, second mortgages, lines of credit, etc. based upon the potential customer's ownership of specified securities.

Each of the examples above describes the claims and presents a table of questions for each claim.

3. Recent World Wide Web Cases: Schrader, Alappat, Warmerdam, Lowry and Trovato

a. Gottschalk v. Benson, 409 U.S. 63

This landmark patent case steered corporations away from the patents toward copyright laws to protect their software.  The U.S. Supreme Court ruled in 1972 that software makers could not gain patent protection for their products. Their reasoning was that software is "merely a series of mathematical calculations" and not the sort of patentable "process" covered by the Patent Act.  This decision was eroded away in the subsequent cases after Parker.

b. Parker v. Flook, 437 U.S. 584 (1978)

The U.S. Supreme Court ruled that unpatentable software did not become patentable by the addition of "conventional, post-solution applications" of the software.

c. Diamond v. Diehr, 450 U.S. 175

The Supreme Court ruled in 1981 that a process for curing rubber was patentable subject matter, despite the fact that all of the hardware involved in the curing process was well-known and the only new technology was the software controller.  The Supreme Court also identified three categories of subject matter that are specifically unpatentable, namely "laws of nature, natural phenomena, and abstract ideas."

d. In re Iwahashi, 888 F.2d 1370

The Federal Circuit U.S. Court of Appeals found that a voice-recognition apparatus that was almost entirely software was patentable subject matter.

e. Arrhythmia Research Technology Inc. v. Corazonix, 958 F.2d 1053

The Federal Circuit U.S. Court of Appeals also found that an apparatus that used electrocardiographic signals to determine a patient's susceptibility to a heart attach was patentable subject matter despite the fact that the invention was almost entirely software.  The court reasoned that, although the method included a series of mathematical calculations, these constituted a practical application of an abstract idea (a mathematical algorithm, formula, or calculation), because it corresponded to a useful, concrete or tangible thing – the condition of a patient's heart.

f. In re Alappat, 33 F.3d 1526

The Federal Circuit found that circuitry that converted waveform data into pixel illumination data for display on an oscilloscope was patentable subject matter.  The court claimed that it was not issuing a patent for mathematical expressions in reasoning that "data transformed by a machine through a series of mathematical calculations to produce a smooth waveform display on a rasterizer monitor, constituted a practical application of an abstract idea (a mathematical algorithm, formula, or calculation), because it produced 'a useful, concrete and tangible result' – the smooth waveform."