[Discuss] Discuss Digest, Vol 7, Issue 8

[Hsuan-Yeh Chang]

> From: "Daniel C." <dcrookston at gmail.com>
> Can you give us an English translation of this, please?  Specifically,
> on what grounds did they decide that software is nonstatutory (I'm
> guessing this means you can't patent it?) but a web-based system
> (which is also software...) is?
>

Below are my personal understandings and observations of these decisions.

1. "The name of the game is the claim."  So, it all boils down to how the
claim language is structured and formulated.

2. If the claim language can read on a "purely software embodiment," the
claimed invention is not patent eligible.  In other words, when one reads
the claim language, if the words in the claim can be understood to reflect
software codes *per se *(say, for example, printed on a piece of paper or
stored in a mass storage), it would cover "descriptive material" and thus
is not patent eligible (nonstatutory).  I suspect that the applicant
(Cohen) might seek judicial review for this patent office decision.

3. On the other hand, if the claim language pertains to a web-based system
or method, the implementation of which would require some sort of
communication networks.  It appears that the patent office currently
interprets the computer network as a "particular machine."  Therefore, any
web-based system or method must be tied to a "particular machine" and thus
is patent eligible.  Arguably, if a "general purpose" computer cannot be a
"particular machine," I am not sure why people couldn't interpret wide area
network (aka Internet) as a "general purpose" network, and thus not a
"particular machine."


HYC