Wednesday, June 6, 2012

PTO Struggling with Patentability of Computer Software?

In Avoiding Subject Matter Problems but Creating Written Description Problems, Professor Crouch states  the PTO is struggling with determining the patentability of computer software.

To illustrate he used the prosecution of the recently issued US Patent No. 8,196,213 to Microsoft. The PTO had rejected a claim directed to a computer readable medium, because that medium encompassed "signals" that are unpatentable under 35 USC 101. See In re Nuijten, 500 F. 3d 1346 ( Fed. Cir. 2007).

As background, In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995) held computer software embodied in a floppy disk (i.e., a computer readable medium) was a patentable manufacture within the meaning of 35 USC 101.

To overcome this 35 USC 101 rejection, Microsoft added the underlined language in claim 1:

A computer readable storage medium excluding signals including computer executable instructions for securing a computing device, the computer readable storage medium comprising:
  • instructions for validating, by a title player effectuated by native instructions, a digital signature of a manager and a digital signature of a managed library;
  • instructions for granting, to the managed library, access to native functions of an operating system in response to validating a first digital certificate associated with the managed library; and
  • instructions for denying, by the manager, an attempt by a managed application to access a native function of the operating system in response to determining that a second digital certificate associated with the managed application indicates that the managed application is required to access native functions of the operating system through the managed library (emphasis added).
As to whether the amendment was supported, Professor Crouch noted the specification discusses computer storage (e.g., flash, RAM) but not signals. My initial reaction is why do you need to amend the claim to exclude what is inherent in a computer storage medium? All data storage devices have I/O signals. Many patents recite a storage device without reciting that the various inherent features are "excluded."

After setting forth these facts, Professor Crouch asks readers should the PTO reject the amendment for failing to meet the written description of 35 USC 112?

Under US patent law, written description is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.

By this standard, those skilled in the art would understand the inventors had possession of the claimed invention, because they would know the subject matter could be implemented on computer readable storage medium without signals.

Given the PTO prefers we use the "magic words," Microsoft's amendment might be less subject to debate if it recited: "A non-transitory computer readable storage medium ...." See the PTO notice Subject Matter Eligibility of Computer Readable Media.

Also see Patently-O's Survey Response: Does the Amendment Violate the Written Description Requirement? which indicates most readers agreed the amendment met the written description requirement.

Copyright © 2012 Robert Moll. All rights reserved.