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Federally Circuitous, Good questions. I don't know. Have you heard or seen anything indicating that Kappos supports the rules? Was IBM a supporter of the new rules?
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6, I confused this with Bilski.
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You just knew that this was going en banc.
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6, My bad. They hadn't.
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Could you plot both on the same graph?
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You missed it. In the post-Bilski case of In re Ferguson, the Federal Cicuit -- in deciding the Bilski machine-or-apparatus prong -- held that the Applicants' method claims were not tied to any particular machine or apparatus. This is the test they employed: "a machine is a “ ‘concrete thing, consisting of parts, or of certain devices and combination of devices.’ This ‘includes every mechanical device or combination of mechanical powers and devices to perform some function and produce a certain effect or result.’ ” Here, the Federal Circuit in Ferguson included the FUNCTION and PRODUCE elements in its examination when deciding whether something met the Bilski machine-or-apparatus. Also, in a few post-Bilski cases, the Board has looked to whether the method was performed by a machine-or-apparatus which is one way that a method can be tied to a machine.
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I know that you are troubled because Bilski does not recite the magic words "performed by." However, the definition of machine includes the magic word "perform" as discussed so long ago by the Supreme Court. Above, you have provided the well-known definition of machine as being a “concrete thing, consisting of parts, or of certain devices and combination of devices." What you have not included in your analysis is that a machine "includes every mechanical device or combination of mechanical powers and devices to PERFORM some function and PRODUCE a certain effect or result" from the Supreme Court's 1863 case of Burr v. Duryee and 1853 case of Corning v. Burden (see the CAFC's March 2009 of In re Ferguson for discussion of these in light of Bilski) (my emphasis). When discussing a machine, you must examine whether it PERFORMS some function and PRODUCES a certain effect or result. You want for me to admit or concede to you that a restroom and an airplane are machines or "particular" machines under Bilski. I cannot make such admission or concession in the IBM claim (although it they may be machines or appartuses in other claims). As a preliminary matter, I am sure you'll agree that the independent claim (restroom sans airplane) seeks to pre-empt the entire world of restroom reservations whether in flight or at my local Chili's. Hence, under Bilski, it fails the machine prong. Even without pre-emption, you must yourself, "does the IBM restroom perform some function and produce a certain effect or result"? Answer: No, the IBM restroom does not receive or notify. In other words, the IBM restroom does not PRODUCE the effect or result of the claim -- let alone a "certain" effect or result. Following this analysis, on to the airplane. Query: Does the IBM airplane perform some function and produce a certain effect or result? No, the IBM airplane does not receive or notify. In other words, the IBM airplane does not perform some function and produce the effect or result of the claim -- let alone a "certain" effect or result. To answer your questions to me: No, neither the IBM restroom not the IBM airplane are machines as claimed because they do not PERFORM some function and PRODUCE a certain effect or result. Because they are not machines, they cannot be "particular" machines required by Bilski.
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Obvious, Malcolm, I disagree. This claim can be saved under 101 but only by amendment. See No. 86 above. It's not the best, but it shows the claim being tied to a particular machine or apparatus. Now, does it deserve a patent as I have amended? No, 102 and 103 will prevail. Can it work around prior art? Maybe, but the claim would have to be serverly, severely narrowed.
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Actual Inventor, Let me see if I understand you. Suppose I invent a new technique of throwing a curve ball. If I mention "baseball" in the preamble and an element of a method claim (like restroom is used) and describe the sequential techniques of gripping and throwing the baseball with reference to the baseball seams, that my claimed method passes 101 under the Bilski machine prong because I recite the apparatus of a baseball? That I can claim a method of throwing a curve ball? Note that I do not mention in my claim a robotic machine with mechanical fingers and arms that has a sensors means of identifying the seams on the baseball and throwing the baseball.
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Actual Inventor, Let me see if I understand you. Suppose I invent a new technique of throwing a curve ball. If I mention "baseball" in the preamble and an element of a method claim (like restroom is used) and describe the sequential techniques of gripping and throwing the baseball with reference to the baseball seams, that my claimed method passes 101 under the Bilski machine prong because I recite the apparatus of a baseball? That I can claim a method of throwing a curve ball? Note that I do not mention in my claim a robotic machine with mechanical fingers and arms that has a sensors means of identifying the seams on the baseball and throwing the baseball.
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Here, given the broadest construction, the claimed method can be tied to a human and not a particular machine or apparatus. The method, as claimed, can use a human only and not a machine or apparatus -- let alone a "particular" machine. It fails the Bilski machine prong. You don't even have to go to 102, 102, 112. Contrary to what you say, merely reciting restroom or airplane does not tie the method to a machine or apparatus to avoid the Bilski machine prong. Want this claim to pass 101 under Bilski? Here's an example: 1. A method of providing reservations for restroom use, comprising: receiving a reservation request signal from a user input device; and notifying the user associated with the user input device when the restroom is available for his or her use. Here, the claimed method is tied to a particular apparatus of the user's input device. Hence, it passes Bilski's machine prong. You'll still have to deal with 102, 103, and 112 issues, but not 101.
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Second draft with the reservation request added. Sitting next to me and busy re-reading one of the Harry Potter books as she always does on flights, she asked me to let reserve the lavatory when it became vacant. Upon receiving her request, I got up from my seat, went to the lavatory, stood in front of the door, and blocked the door to prevent others from using it. When the current occupant existed the lavatory, I notified my wife that it was vacant. Here, given the broadest construction, the claimed method can be tied to a human and not a particular machine or apparatus. The method, as claimed, can use a human only and not a machine or apparatus -- let alone a "particular" machine. It fails the Bilski machine prong.
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"Bilski does not say the machine or apparatus must "use" the claimed process." That is not my position, and I agree with your sentence. See #54 above.
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You know, my wife and I were traveling the other day. Sitting next to me and busy re-reading one of the Harry Potter books as she always does on flights, she asked me to let her know when the lavatory was vacant. I received her request, and upon looking and seeing that the occupied sign was not illuminated, I told her that it was vacant. Had the IBM claim not been disclaimed, I would have infringed it. And you're trying to convince me and others on this blog that the claim is "tied" to a particular machine (let alone a machine at all)? No, the claim is not, and merely citing a restroom(s) doesn't make it so. This doesn't pass the Bilski machine prong.
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What do you think Bilski says?
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Here's more on Banner.... http://en.wikipedia.org/wiki/Don_Banner
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From the WSJ article: "The Patent Office now gets some 500 million applications a year[.]" Is this true? A half a billion? Or does the reporter have his number wrong?
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"Really? You waste this discussion talking about airplane toilets. Do you really think Dave read and approved each application filed by IBM. That is like saying the Director knows about every patent allowed by an Examiner." Chief, I'm from the old school of military leadership (with the emphasis on leadership). In his position, he is responsible for what his unit does and fails to do. He shares responsibility for the restroom reservation system. If he fails to accept responsibilty, I don't care if he is a paper tiger. If he fails to accept responsibilty, then he doesn't deserve to be Director despite his otherwise empressive credentials of "working up throught the ranks." Now that responsibility has been addressed, the next step to address is accountability. How should he be held accountable? It depends. IBM finally disclaimed the patent after the PTO threw it into reexamination and public outcry. The question to me is this: what action did Kappos take after this public spectacle? Did he issue a directive reviewing and/or curtailing the practice of claiming methods like the restroom reservation method? Or did he just sit still maintaining the IBM status quo and waiting for the issue to go awaay? Knowing his response or actions to this episode will shed light on the leadership traits he currently possesses and what to expect if he becomes the Director.
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"Without using examples, explain the difference between a particular machine and one that isn't? What is the law the governs this distinction?" Here's a start... According to Bilski (p. 11 of slip opinion), a claimed process should use a particular machine or apparatus -- not a particular machine or apparatus should use a claimed process. Applying this to the IBM restroom reservation claim, the reservation method should use a particular machine or apparatus -- not a particular restroom should use a claimed reservation method. The IBM claimed method uses no machine (let alone a particular machine).
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"What is a "particular" restroom? See, here is my restroom with a number display outside the door - "particularly" set up for use with a reservation system. It is no longer a general purpose restroom on a general purpose air plane. So, it must be okay under Bilski." If you're taking about the IBM method, the limitations with which you state are not included in the claim. Hence, the claim as stated fails Bilski. How would your restroom reservation method be claimed with the "number display outside the door" so that you would think it passes Bilski's machine/appartus test?
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"Wait a second. Claim 1 is tied to a machine/apparatus -- a restroom. This is too easy." It is not tied to a "particular" machine when given its broadest construction: "1. A method of providing reservations for restroom use, comprising: [flight attendant or matre d'] receiving a reservation request from a user; and [flight attendant or matre d'] notifying the user when the restroom is available for his or her use. Sorry, but this doesn't pass Bilski's particular machine or apparatus test.
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Given the claims are given the broadest interpretation, this one clearly doesn't pass 101 muster: 1. A method of providing reservations for use of a facility, comprising: [flight attendant] receiving a reservation request from a user; and [flight attendant] notifying the user when the facility is available for his or her use; characterised in that: the facility comprises a restroom.
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Malcolm, I going to guess that given IBM's predilection for "crap" (your words) applications, Mr. Kappos does not have your support.
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"7. The method according to claim 1, wherein said reservations are provided on an airplane. 8. The method according to claim 1, wherein said reservations are provided on a passenger train or boat. Claims 7 and 8 survive." The "said reservations" modifies the preamble and not the elements. Also, "provided on" a machine is not the same as being performed by a machine. Sorry, claims 7 and 8 do not pass the machine prong of Bilski. Nor do they pass the transformation prong of Bilski. As Malcolm as stated, there is no transformation of data -- just a manipulation of data.
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