obvIPat - Obviously Patentable

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The Danger of Claiming Broadly: CyberSource Corp. v. Retail Decisions, Inc.

by Orlando Lopez

While a patent attorney attempts to obtain the broadest possible claims, there is the danger of claiming too broadly.  In CyberSource, the District Court and the Court of Appeals for the Federal Circuit (CAFC) both found that the method claim was invalid since it recited a mental process.  Both the District Court and the CAFC also invalidated the Beauregard claim, the claim that recites a computer program product having a computer usable medium that has computer readable code embodied therein that causes the processor to perform the method.  The invalidation of the Beauregard claim, at first sight, brings terror to the hearts of the friends of software claims.  A closer examination of the claim and a comparison of the CAFC opinions in Research Corp. and In re Aoyama, shows that when a claim recites a very broad method and the specification does not provide enough detail on why a computer is necessary or how to implement the method in software, the method claim is vulnerable to being considered a mental process.  Cloaking the method as being performed by a processor executing computer readable code stored in a computer usable medium (a special purpose machine), might not overcome the mental steps classification; and, if it does, it would leave the claim vulnerable to challenge based on either lack of enablement (a programmer would not be able to, with minimal experimentation, write the code) or insufficient written description.  Similarly, cloaking the claim as software stored in a computer usable medium (a memory), does not turn a method of mental steps into an honest claim.  In the Aoyama opinion, the CAFC stated, that when a flowchart does not provide sufficient detail for a skilled person to write a program to perform a particular function, a claim written in functional form including the particular function, can be found to be invalid due to indefiniteness. Cloaking a method claim as software stored in a memory or as being performed by a processor executing software stored in a memory, will not turn mental steps into a patentable claim, and a flowchart that does not provide enough detail for a programmer to write code that performs the desired function, does not describe a supporting structure for a functional claim.  However, a Beauregard claim for software that describes a method requiring a computer to execute it or for using flowcharts that provide enough details for a programmer to write the code as definition of a structure in a functional claim, are still both valid.  In Research Corp, the CAFC found that the blue noise mask method was patentable subject matter, since the method had an application in computer technology and some of the claims required systems or components, such as film, printers, etc.  Cybersource provides further guidance in how to (or not to) claim computer implemented methods and how to describe them in the specification.




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