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The “Useful Arts” in the Modern Era: For SCOTUS on CLS Bank

Written by John White
Patent Attorney - Berenato & White
PLI Patent Bar Review Lecturer
Posted: April 13, 2014 @ 10:30 am
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This is my third article, in a series, written to provide some useful aid for the Supreme Court and clerks in the wrapping of their minds and writing around the issues surrounding computers and software. I have already written two installments:  Help for the Supreme Court in CLS Bank; and, What is a Computer?  As predicted when I started, almost every patent person with a “dog” in the fight re software has written articles (or Amici) to be helpful. I only hope that what emerges from beneath the avalanche of writing is something that can get the patent system, and its relationship to computers/software, back to where it needs to be for the system to be an incentive and reward based enterprise as it was intended.

The object of this installment is not scholarly, in the sense that case citations are going to show up, but rather is another effort to give the lay person a chance to “get” what it is we in the patent community continue to babble about, in patent attorney code, when it comes to software. Of course, because, I am doing the writing, car analogies will be present because that is the only technology that I can readily relate to when characterizing computers/software/machines.

The story that begins the tale is me attending a small car show in Williamsburg, Virginia last summer. The selection of cars ranged from brass era to modern sports cars. As a part of the show, and to keep folks around, they had a schedule of “car starts” where a specific car would be fired up and the crowd would be given a short demo on the particular car. The one I waited for, specifically, was the Ford Model-T. It was the car that made modern America. It put thousands on the road and thousands to work. That “device” changed the course of our collective history. But, it was, none-the-less, a cantankerous beast. Henry Ford was quoted as saying, “I will give you the car for free if I can sell you the parts to keep it running!” (Hey, the first “freeware” sales model!) It was solid and, for its day, very reliable and capable. But the owner /operator had to be mechanically quite adept.

The owner I watched in Williamsburg that day was nothing short of a magician. He reached from outside the car into the center of the steering wheel, set the throttle, choke,  and spark advance, went around front to the crank handle sticking out of the motor beneath the radiator and, with a short quarter turn yank on the handle, the motor sputtered into happy operation. Wow. If only it was that simple. You see, for this engine to start, a confluence of air/fuel/spark at just the right moment has to occur. It was arranged by that owner that day in an exquisitely provided example, and is now done routinely in a modern car under just about any operating conditions. Let’s figure out why.

Each step that owner took to make the Model-T come to life is done today by software. All the same steps are present, but none are revealed in the way they were then. Today, we “do things” differently; but, bear in mind we still “do” the same things. The point I am making is that what was once largely mechanical and used the presence of levers and cables and gears and handles and owner intuition, is now done by sensors providing input to a CPU that, based on coded instructions, sets other sensors according to certain criteria. But, the outcome is the same. A confluence of air/fuel/spark occurs at just the right moment, and the car sputters to life.

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Many, many, many patents have issued to cover the physical elements and intuitive steps to make this familiar sequence possible and increasingly reliable and refined.  Mechanical elements, i.e., rotating shafts with a gears on each end, have been replaced by a toothed wheel and magnetic sensor and a wire, but the information about where the engine is in its cycle of rotation is the same. Top dead center remains the paramount piece of information. The intuition about throttle and choke and spark timing has been replaced by a 3-D grid of choices recorded from an optimized and recorded series of engine dyno runs. All the owner intuition having been reduced to series of data points. None-the-less, it means you can leave your car at Airport Long Term parking, return in 2 weeks and it springs to life.

How we “do” things now has changed, but what we do has not. Hence, the patentability should not change based on the tools we now use to accomplish what we always have.

The next, and shorter example about how we “do” things now, has to do with gear cutting. I know, another car thing, but hey it is what I know! When you plop yourself into an older vehicle and go for a drive, one thing you notice is the relative lack of refinement and general noise level of the various mechanical bits and pieces. There are lots of reasons for these differences, but one reason among the many is gear cutting. Gear cutting has gotten better and better over the years and, as a result, gears transmit torque much more quietly than in the past. I have written many patents on machine tools and techniques that make these improvements possible; but, none so startling as the following.

A large company in the mid-west was in possession of a few thousand gear cutting machines that were now obsolete. They could cut only in a forward direction. Newer machines could cut gears in a forward or backward direction. Now, to the lay person, this sounds crazy. 1 direction verses 2 direction cutting: is that really an advance that is noteworthy. Well, it cuts (no pun here) the time and cost to make a given gear in half: it requires half the tool changes, half the labor, half the machining stations, half the electricity, etc. Hence, it was an astounding  advance. It also obsoleted factory floors full of what were, until the 2 direction cutting machines were introduced, state-of-the-art machines costing $ 100,000 each, not to mention the installation, transport, etc. An entire factory floor full to the brim with mechanical marvels had just been reduced to expensive redundant scrap.

Well, the original supplier of the one direction cutting machines, working with the engineers at the Midwestern company, determined that with a new controller box mounted onto the one direction machines that could modulate the power to the spindle holding the gear being formed, you could create a slight, but sufficient, braking effect on the spindle. If, at the same time, the cutter was sped up a little, you could “cut” and shape and finish, in sequence, the “front” side and the “back” side of the gear tooth being formed. In essence, although it would still only cut in one direction, it could, by virtue of the newly introduced relative speed and braking effects, imitate most of the advantages of two directional machines! An entire factory floor full to the brim with expensive redundant scrap resurrected to expensive mechanical marvels. This occurred about 20 years ago, I expect those machines, with further software updates are cutting gears to this day.

What is the point of the forgoing examples? To illustrate to the lay person that just because software is the “tool” being used to “do” things, we are still “doing” the same things in the same ways for the same reasons. To wit: That, in the modern era, the execution of the “useful arts” is done using software does not change what is done or the fact that it is a “useful art”; and, the patentability thereof should be unaffected simply because we “do” it differently now as compared with how we “did” it then.

About the Author

is a US patent attorney and a patent lecturer. He is an Adjunct Law Professor at the University of Virginia School of Law, and he is also the principal lecturer/author of the PLI Patent Bar Review Course, a course that he originally created. In fact, since John began teaching patent bar review courses in 1995, he has personally taught approximately 50% of all practicing patent attorneys and agents how to successfully become admitted to the Patent Bar. John has also taught numerous US Patent Examiners at the United States Patent & Trademark Office (USPTO) in the “Law and Evidence Course” necessary for them to advance to Partial Negotiation authority as Examiners.

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  1. The tape recorded orals from Alice v. CLS may be found here:

  2. Our current crop of patent examiners would just throw out all those patents, even though the software operates on “useful” machines. That is why the IPR’s constantly shoot down patents – because the patent office has changed the rules on so many arts, and misapplies the prior art to create their desired result.