From: hollaar@ursa10.cs.utah.edu (Lee Hollaar) Newsgroups: misc.int-property,misc.legal.computing,comp.multimedia,comp.graphics Subject: Re: PATNEWS: PTO losing Lowery appeal - performance CD's patentable? Date: 22 Dec 1994 20:50:44 GMT Organization: University of Utah Computer Science NNTP-Posting-Host: ursa10.cs.utah.edu In article tksavery@netcom.com (Techs Avery) writes: >On behalf of those of us who this case might affect, could you give a >brief summary of what the case is about and the issues involved. Here's a summary of the case I posted just after it was decided in August. On August 26, 1994, the Court of Appeals for the Federal Circuit decided In re Edward S. Lowry, docket 93-1558. Lowry, an employee of Digital Equipment Corporation, had filed a patent application for a "Data Processing System Having a Data Structure with a Single, Simple Primitive." As noted in the decision, "The invention provides an efficient, flexible method of organizing stored data in a computer memory." Claims 1 through 5 claim a memory containing a stored data structure. Claim 1 is representative: 1. A memory for storing data for access by an application program being executed on a data processing system, comprising: a data structure stored in said memory, said data structure including information resident in a database used by said application program and including: a plurality of attribute data objects stored in said memory, each of said attribute data objects containing different information from said database; a single holder attribute data object for each of said attribute data objects, each of said holder attribute data objects being one of said plurality of attribute data objects, a being-held relationship existing between each attribute data object and its holder attribute data object, and each of said attribute data objects having a being-held relationship with only a single other attribute data object, thereby establishing a hierarchy of said plurality of attribute data objects; a referent attribute data object for at least one of said attribute data objects, said referent attribute data object being nonhierarchically related to a holder attribute data object for the same at least one of said attribute data objects and also being one of said plurality of attribute data objects, attribute data objects for which there exist only holder attribute data objects being called element data objects, and attribute data objects for which there also exist referent attribute data objects being called relation data objects; and an apex data object stored in said memory and having no being-held relationship with any of said attribute data objects, however, at least one of said attribute data objects having a being-held relationship with said apex data object. Considering claims 1 though 5 (there were 29 initial claims which included claiming the invention as a data processing system executing a program and method claims, in addition to the structured memory claims), the examiner rejected them under Section 101 as non-statutory and under Section 103 as obvious in light of Patent 4,774,661 (Kumpati). The Board of Patent Appeals and Interferences reversed the Section 101 rejection, finding that the claims to a memory containing stored information recited an article of manufacture and were therefore statutory subject matter. But the Board felt that the information stored in the memory was analogous to writing on a printed page and relied on In re Gulack, a 1983 Federal Circuit decision that said: Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability. The Board held that Lowry had not shown that there was a functional relationship between the data structures and the memory containing them, and gave no weight to the nature of the data structures in the claims. Since Kumpati disclosed a CPU with memory containing data structures (although of a different form), disregarding the nature of Lowry's data structures makes his invention obvious in light of Kumpati. Lowry appealed to the Federal Circuit, where the case was heard by a panel consisting of Circuit Judges Rich and Rader and Senior Circuit Judge Skelton. Judge Rader wrote the unanimous decision. He first noted that "Gulack cautioned against a liberal use of 'printed matter rejections' under section 103" because it "stands on questionable legal and logical footing" and felt that it should not be extended to a new field, such as information stored in a computer memory. "This case, moreover, is distinguishable from the printed matter cases. The printed matter cases 'dealt with claims defining as the invention certain novel arrangements of printed lines or characters, useful and intelligible only to the human mind.' The printed matter cases have no factual relevance where 'the invention as defined by the claims requires that the information be processed not by the mind but by a machine, the computer.' Lowry's data structures, which according to Lowry greatly facilitate data management by data processing systems, are processed by a machine. Indeed, they are not accessible other than through sophisticated software systems. The printed matter cases have no factual relevance here. . . . "More than mere abstraction, the data structures are specific electrical or magnetic structural elements in a memory. According to Lowry, the data structures provide tangible benefits: data stored in accordance with the claimed data structures are more easily accessed, stored, and erased. Lowry further notes that, unlike prior art data structures, Lowry's data structures simultaneously represent complex data accurately and enable powerful nested operations. In short, Lowry's data structures are physical entities that provide increased efficiency in computer operation. They are not analogous to printed matter. The Board is not at liberty to ignore such limitations." Since the elements of the claims limited to particular data structures cannot be ignored, the claims are not obvious in light of Kumpati and the decision on the Board affirming the examiner is reversed. This does not necessarily mean that Lowry will receive a patent for his system, but that the examiner will have to consider the nature of the data structures when trying to make a prima facie case for obviousness. Lee A. Hollaar Professor of Computer Science Registered Patent Agent