Posts Tagged ‘process’

Determining Patent Eligibility – Part 7, Process

Sunday, May 26th, 2013

      We’ve been discussing hurtles which must be jumped in order for an inventor’s creation to be considered for a patent.   Federal statutes, namely 35 USC § 101, define the bases of patentability, including providing definitions on key terms, such as what constitutes a machine, an article of manufacture, and a composition of matter.   Today we’ll wrap up our discussion on determining patent eligibility when we explore the final hurtle by defining process.

      To get an understanding of what is meant by process, we must look to the lawsuit of Gottschalk v. Benson, a case involving patentability of a mathematical algorithm within a computer program.   In this case the US Supreme Court held that a process is a series of steps or operations that transform substances or came about by way of a newly invented machine.

      Based on the Court’s definition, a process can be many things, from a production line that transforms corn into corn chips within a food manufacturing plant to a mathematical algorithm running within software on the platform of a newly devised type of computer.   However, the term usually pertains to a series of operations or steps, most frequently manufacturing in nature, where physical substances are transformed into useful products, that is, they possess the quality of utility, as discussed earlier in this blog series.   A “physical substance” is anything of a physical nature existing on our planet.


Engineering Expert Witness Patent Infringement


      Before I end this series I’d like to mention that under 35 USC § 101 an invention can be eligible for a patent if it makes a useful and beneficial improvement to an existing machine, article of manufacture, composition of matter, or process.   That is to say, something may have already been patented which performs a specific function, but if that is improved upon in any significant way, it may receive a new patent.

      For example, suppose an improved process for manufacturing food products was developed by adding additional steps to an existing patented process.   If this improvement results in benefits such as lowered production costs, increased production rate, or reduced health risks to consumers, then this improved process may be eligible for a patent under 35 USC § 101.

      Next time we’ll begin an exploration of the growing presence of 3D animations within the courtroom, specifically how they bring static 2D patent drawings to life.


Determining Patent Eligibility – Part 6, Composition of Matter

Sunday, May 12th, 2013

      In high school chemistry class we watched a movie in which nothing less than a magical transformation took place.   A scientist mixed two parts hydrogen gas and one part oxygen gas in a clear, sealed container, then sent an electrical charge into it.   It created a spark, which provided the energy to force the two gases to join together in an explosive chemical union.   The result was that they became a composition of matter which we recognize to be water.

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      Composition of matter is a term within the federal statute that determines patent eligibility, that of 35 USC § 101.   It, along with the other terms we’ve been discussing, such as machine, and article of manufacture, is yet another consideration which must be addressed on the road to patentability.

      To get a handle on the meaning of composition of matter, we have to go back to the Supreme Court’s ruling in Diamond v. Chakrabarty, a landmark case introduced in last week’s blog.   Here the court defined composition of matter as, “compositions of two or more substances and all composite articles, whether they be the results of chemical union, or of mechanical mixture, or whether they be gases, fluids, powders or solids.”   The Court’s definition of composition of matter covers chemical compounds and composites.

      The Merriam-Webster Dictionary, defines a composite as something “made up of distinct parts.”   Composite articles include most of the man-made products modern society is so familiar with and can’t seem to live without.   Examples include plywood, concrete, and fiberglass.   They’re typically made up of a myriad of components, some of which are raw materials, some man-made chemical compounds.

      Chemical compounds are commonly made by uniting two or more chemical elements, the basic building blocks of matter that you might be familiar with from the Periodic Table always on display in a high school chemistry classroom.   When a chemical union takes place the elements are forced, by way of mixing and heating, to bind together at the atomic level.   If you’re not quite sure what “atomic” means, visit this site for a brief refresher: Atom Definition

      Chemical compounds include man-made things like fuels, plastics, fertilizers, food preservatives, pesticides, and cleaning solutions.   They’re all things that require human intervention to produce.

      You may not realize it, but metal alloys are also essentially chemical compounds.   These alloys are formed when two or more metals, or a metal and nonmetal, are fused together.   Steel, for example, is an alloy composed of multiple elements, including iron, nickel, and carbon, which mix together during heating and become molten.   During cooling the elements firmly unite and form atomic bonds to produce a new solid, one not available directly from nature.

      Next time we’ll wrap up our discussion on 35 USC § 101by discussing the meaning of process with regard to patent eligibility.


Determining Patent Eligibility – Part 5, Manufactured Articles

Monday, May 6th, 2013

      Imagine having freshly baked pastries available to you all day long, every day, while at work.   I’m not talking about someone bringing in a box of donuts to share, I’m talking about baked goods on a massive scale.   This is what I experienced in one of my design engineering positions within the food industry.   These baked goods constituted the articles of manufacture of the food plant, and they presented a constant temptation to me.

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      Just what constitutes an article of manufacture is another aspect of the second hurtle which must be passed to determine patent eligibility.   It is addressed under federal statutes governing the same, 35 USC § 101, and is contained within the same area as the discussion of what constitutes a machine, a subject we took up previously in this series.

      Why bother defining articles of manufacture?   Well, while hearing the patent case of Diamond v. Chakrabarty regarding genetically engineered bacterium capable of eating crude oil, the US Supreme Court saw fit to define the term so as to resolve a conflict between the inventor and the patent office as to whether a living organism could be patented.

      The net result was the Court declared that in order to be deemed a patentable article of manufacture the object must be produced from either raw or man-made materials by either hand labor or machinery and must take on “new forms, qualities, properties, or combinations” that would not naturally occur without human intervention.   In other words, a creation process must take place and something which did not previously exist must be caused to exist.

      The court’s definition of articles of manufacture encompasses an incredible array of products, much too vast to enumerate here.   Suffice it to say that the defining characteristic is that if it should consist of two or more parts, there is no interaction between the parts, otherwise it could be categorized as a machine.   In other words, the relationship between their parts is static, unmoving.   An example would be a hammer.   It’s made up of two parts, a steel head and wooden handle.   These parts are firmly attached to one another, so they act as one.

      Next time we’ll continue our discussion on the second hurtle presented by 35 USC § 101, where we’ll discuss what is meant by composition of matter.

Determining Patent Eligibility – Part 3, What Constitutes a Machine?

Sunday, April 21st, 2013

      One of my favorite toys as a kid was Mr. Machine.   He was a windup mechanical man that swung his arms when he walked while repeatedly squawking a strange YAK! sound.   His body was transparent, so all the gears and levers inside were visible, and he even came with his own repair wrench.   Alas, his wrench was of little use when Mr. Machine took a tragic fall down the basement stairs.

      Mr. Machine was aptly named.   There’s no question but that he was a machine, because his inventor received a US patent, No. 3,050,900.   In order to accomplish this he had to have met guidelines set out in federal statutes, specifically those contained in 35 USC § 101.   He had to prove that Mr. Machine was a bona fide machine.

patent eligibility machine patent eligibility machine

      If you’ll recall from last week’s discussion, in order to secure a patent, inventions must prove to be original technology that is classifiable as a machine, an article of manufacture, a composition of matter, or a process, or an improvement upon same.   Last week our focus was on utility, the first hurdle that an invention must jump for it to be patent eligible.   Let’s continue our discussion on patentability by examining the second hurtle.

      When you consider the word machine, you might imagine something containing mechanical parts, like my childhood mechanical friend.   But in the world of patents that’s not necessarily the case.   There, a machine can be mechanical, electrical, electronic, or electromechanical in nature.   In other words, a machine can include anything from a cell phone to a rocket.

      To be precise, under patent law the definition of machine includes any physical device consisting of two or more parts which dynamically interact with each other.   For example, a purely mechanical machine, such as a diesel engine, has many moving parts.   Those parts, the pistons, connecting rods, etc., are mechanically linked to dynamically interact, or move together, when the engine runs.

      Next week we’ll consider less obvious examples of what constitutes a machine under patent law.


Determining Patent Eligibility – Part 2, Utility

Sunday, April 14th, 2013

      When I was growing up in the 1960s the Chicago Tribune featured a comic strip by Bill Holman called Smokey Stover.   Smokey was a fireman who had all sorts of ridiculous, nutty, and even bazaar inventions, like his two-wheeled fire truck called the “Foomobile.”   In the real world his inventions could never work, but that didn’t stop me from being a kid and enjoying Smokey’s goofy adventures.

Patent Eligibility -  Utility

      Smokey’s fire truck would never pass a patent test.   Why?   Because it wouldn’t get past the first requirement for patentability, that is, utility.

      Last time we introduced the federal laws governing patents as found in Title 35, Section 101, of the United States Code (USC), 35 USC § 101 for short.   It sets out requirements for patentability, and the first hurdle that an invention must jump is that it must possess the quality of utility.   In other words, it must be useful.

      This quality of utility prevents ridiculous and/or hypothetical devices, such as Smokey’s Foomobile, from receiving a patent.   Because the Foomobile consists of an engine and two wheels mounted on a single axle, there’s nothing to keep it from falling over.   The weight of its engine makes it front-heavy and unstable.   The nutty vehicle will tip forward, and its front bumper will become wedged in the ground.   The Foomobile is just not capable of passing the test of utility because it cannot be operated as intended – Smokey would never make it to the scene of the fire – and it’s unable to provide any identifiable benefit to its users.

      Once the hurdle of proving an invention’s utility is passed, the next considerations for patent eligibility must be addressed.   Is the invention a machine?   A process?   Just what defines a machine?   Is it something with gears and a motor?

      Next time we’ll see how within the context of patent eligibility, the word machine can apply to things which are not at all mechanical.


Determining Patent Eligibility – Part 1

Sunday, April 7th, 2013

      Last time I introduced the concept of intellectual property, or IP.   We learned that IP in the eyes of the law is recognized as a creation of an individual inventor’s mind, worthy of commercial value.   It goes to follow that those inventions that have been awarded patents are also a form of IP, because they represent the working ideation of the inventor’s mind.   As such, the patent grants the inventor the sole legal right to profit from the invention to the exclusion of all others.

      So all you need is an idea, and you can apply for a patent, right?   Well, not really.   There are in fact a number of tests that potentially patentable inventions must pass.

      Federal laws governing patents have been in existence since 1790.   They were put in place to give inventors the means to legally protect their exclusive rights to profit from their inventions in our new country.   The first patent was awarded to inventor Samuel Hopkins on July 31st of that year, for a process he created to make potash, an ingredient used to make fertilizer.

      Since that time, the patent laws have been continually revised and expanded to improve the patenting process, something that became necessary due to the explosion of patentable technological innovations after the Industrial Revolution started in the 19th Century.

      In July of 1952, the basic structure of modern patent law was laid out by Title 35 of the United States Code (USC).   Title 35 is a set of laws drafted by Congress that contains all federal statutes governing patents.   Within Title 35 is found Section 101.   It’s the part that addresses patent eligibility.   This Section is commonly referred to within the trade by patent agents and attorneys as 35 USC § 101, shorthand for “Title 35 of the USC, Section 101.”

      According to 35 USC § 101, in order to be patentable an invention must first be useful.   In addition, it must be either a machine, an article of manufacture, a composition of matter, or a process, or it must improve upon an existing machine, article of manufacture, composition, or process.   But what does this all really mean?   We’ll find out next time.