In Research Corp. v. Microsoft, the CAFC discussed the application of 35 U.S.C. § 101 to claims pertaining to abstract ideas, including digital image formats and half-toning. Halftoning is a graphic technique that mimics continuous tone imagery through the use of dots, varying in size, shape or spacing. Halftoning techniques allow computers to present many shades and color tones with a limited number of pixel colors.Research Corporation Technologies (RCT) owns six (6) patents for digital image halftoning, two of which (5,111,310 & 5,341,228) were invalidated by a district court for failing the patentability test (being abstract) of 35 USC § 101. The Federal Circuit (CAFC) reversed the district court and articulated parameters for assessing ‘abstractness.’ The CAFC invoked the U.S. Supreme Court decision of Bilski v. Kappos and stated that the Supreme Court had not provided a rigid formula or definition for abstractness, but rather left the door open for “other limiting criteria that further the purpose of the Patent Act and are not inconsistent with its text.” See Slip Op. at page 14 citing Bilski “(The Court has “never provide[d] a satisfying account of what constitutes an unpatentable abstract idea.” (Stevens, J., concurring)).”
The CAFC concluded that it “did not perceive abstract[ness] in the subject matter of the processes claimed in the ’310 and ’228 patents,” because the ’310 and ’228 patents claimed methods (statutory “processes”) for rendering a halftone image of a digital image by comparing, pixel by pixel, the digital image against a blue noise mask.” “Slip op. at 15.” In its analysis, the panel made certain observations of why the claimed invention was not abstract. These included:
i. The invention presents functional and palpable applications in the field of computer technology: Because the invention addresses “a need in the art for a method of and apparatus for….” halftone rendering.
ii. Certain claims in the application were tied to machines including a “high contrast film,” “a film printer,” “a memory,” and “printer and display devices” and therefore the invention is not abstract.
iii. Inventions with specific applications or improvements to technologies in the marketplace are not likely to be so abstract that they override the statutory language and framework of the Patent Act.
iv. The claimed methods incorporate algorithms and formulas that control the masks and halftoning. These algorithms and formulas, even though admittedly a significant part of the claimed combination, do not bring this invention even close to abstractness that would override the statutory categories and context.
Finally, the panel cautioned that an invention that passes the coarse-filter of section 101 (for abstractness) may however fail the disclosure requirements set forth under 35 U.S.C. § 112 on account of being vague or having an indefinite disclosure. “Thus, a patent that presents a process sufficient to pass the coarse eligibility filter may nonetheless be invalid as indefinite because the invention would “not provide sufficient particularity and clarity to inform skilled artisans of the bounds of the claim. That same subject matter might also be so conceptual that the written description does not enable a person of ordinary skill in the art to replicate the process.””
The coarse-filter as provided by the CAFC serves as a powerful tool to analyze method claims or software claims in the Indian context. Section 3(k) of the Indian patent act provides: “A mathematical or business method or a computer programme per se or algorithms are not patentable.” The “per se” part in 3(k) qualifies that solely a mathematical method, or a computer program are not patentable. However, when the mathematical method, or a computer program is linked to a machine, it might be patentable.
Guidelines in the revised patent manual provide a few practice pointers where these methods and programs are patentable.
The guidelines initially provide detailed explanation of what is not patentable: For example, computer programs claimed in the form of algorithms as method claims or system claims with some ‘means’ indicating the function of flow charts or process steps are not patentable. With respect to combination of a computer program and a machine, the guidelines state that a careful consideration must be made for determining the integration of the novel hardware with the computer program, and for determining whether the machine is program specific or the program is machine specific. Therefore, a computer program which may work on any general purpose computer is not patentable. Method claims reciting computer programs without process limitations in the form of hardware features are not patentable. For a method reciting computer program to be patentable, it must clearly recite into it limiting hardware integers that enable the program to function. Finally, the guidelines provide that claims directed at computer programs coupled to hardware, enabling the hardware to perform a certain function may be allowable.
The effect of this case at the USPTO may be that it stops issuing office actions with a 101 rejection for such claims. For the Indian patent office, the effect is not so clear – the decision may or may not be accepted by the Examiners/Controllers. Nevertheless, this case provides a good framework for analyzing patentablity of method/process claims.
Image taken from: http://www.gnu.org/graphics/kafa.html
This patent (if filed) will not be allowed in India because it is an equation based patent.
Anonymouse
Dear Anonymouse,
It is not certain that this patent will not be granted in India. I am more concerned about the section 3(k) rejections that are applied for most method claims. There are many office actions categorically stating that method claims have a broader scope than device claims when referring to a same application. It seems that this is a general practice at the patent office. This position (from the IPO) is plainly incorrect.
I am looking for more data relating to this issue (section 3(k) rejections) and will do a separate post detailing possible response strategies soon.
Sir,
What is the meaning of software “per se”? Does it implies that one can go for the patenting of the way one arrange and represent the software?
What is the implication of software “per se” in section 3(k)?
Does it mean that one can go for patenting the tech behind and the appearance of software?