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« Guest Post: Overview of First Published Comments on Myriad-Mayo Patent Eligibility Guidance | Main | Deputy Directory Lee Announces the Request for Written Comments to Help Improve PTAB Proceedings »

July 14, 2014


The situation here has striking resemblance to the well-known EPO Appeal Board decision in in T 0208/84 Computer-related invention/VICOM. In that case the originally presented claim which was rejected was to a method for digitally filtering data and was too abstract. The claim that was allowed was to a method of digitally processing images in the form of a two-dimensional data array.

In the present case the corresponding PCT application was brought into effect in the EPO and the novelty report was favourable, but the application was abandoned before the first examination report issued. We cannot therefore be certain how the application would have been treated, but it would almost certainly have received similar objections to the original Vicom claim.

It is well worth downloading and reading the specification. The disclosure is slightly less telegraphic when viewed in the light of the drawings, but the disclosure is startlingly sparse. There is a lack of worked embodiments. Claim 18 is in means + function form and reads:

A digital image processing system using a device profile for describing properties of a device in the system to capture, transform or render an image, said system comprising:
means for utilizing first data of the device profile for describing a device dependent transformation of color information content of the image to a device independent color space through use of chromatic response characteristic functions; and
means for utilizing second data of the device profile for describing a device dependent transformation of spatial information content of the image in said device independent color space through the use of spatial characteristic functions describing image spatial transform characteristics in said device independent color space.

With current interpretations of 35 USC 112(f) it is debatable whether sufficient structure is disclosed to support the "means" language. There are black boxes shown in the drawings, but so far as information is concerned the boxes are largely empty. Claim 10 is similarly in step + function language, although the implications of that were apparently not considered.

This is a classic distributed system invention with a transmitter (a camera), an intermediate processor and a receiver (a display or printer). Where is the device profile functionality to be located - does it form part of the camera or part of the receiver/printer or both? Most likely it is built into the camera, in which a claim to a camera incorporating the technology would have been appropriate, and a description of what happens starting with light transmitted from the lens to the sensing element and ending with a transmitter interface for transmitting the processed image signal would have helped. This case is arguably a classic example of short-sightedness and failure to describe how the invention fits into and interfaces with the larger system in which it is intended to be used.

"one has to wonder if the addition of a few well-placed hardware limitations to claims 1 and 10 would have resulted in a different outcome."

One does not have to wonder too deeply, as the court all but announces such when it rejects the arguments of Digitech when Digitech tried to assert that the claims read on software and/or hardware.

The court said "no, they do not, thus no patent for you."


We're now starting to reap the "whirlwind" of Alice Corp. As you point out, there may be issues in Digitech Image under the 6th paragraph of 35 USC 112, but rejecting these claims as covering patent-ineligible subject matter under 35 USC 101 is an utter travesty. So much for hope of "rational reasoning" from our Federal Circuit after the nonsensical decision in Alice Corp.


Digitech's arguments that the claims in their current form encompassed tangible hardware were doomed to fail, because the claims do not.

What I was referring to is whether the addition of hardware limitations indicating that the method was performed by the camera device or display device would be enough to meet the second prong of the Mayo test.

I am of the mind that linking the method to the tangible act of capturing digital images of a scene would be sufficient.

"[T]here may be issues in Digitech Image under the 6th paragraph of 35 USC 112, but rejecting these claims as covering patent-ineligible subject matter under 35 USC 101 is an utter travesty."

This is the same problem as was met in the In re Roslin case. Once upon a time, the Federal Circuit used to believe that “courts should avoid reaching for interpretations of broad provisions, such as §101, when more specific statutes, such as §§ 102, 103, and 112, can decide the case.” MySpace v. GraphOn Corp., 672 F.3d 1250, 1261 (Fed. Cir. 2012). Unfortunately, Mayo (132 S. Ct. at 1303) declared that “[t]his approach… would make the ‘law of nature’ exception to § 101 patentability a dead letter.”

The regrettable follow-on is that the wisdom of MySpace has been lost. Section 101 is now a first recourse, rather than a last recourse. This is a terrible way to run a patent system, but unless Congress steps in, this is what the SCOTUS wants, and we will have to live with it.

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