From: mcgregor@netcom.com (Scott Mcgregor)
Subject: Re: Patents:  What they are.  What they aren't.  Other factors.
Organization: Netcom - Online Communication Services (408 241-9760 guest)
Date: Thu, 1 Oct 1992 09:02:09 GMT

In article <10880.Sep3008.43.0892@virtualnews.nyu.edu> brnstnd@nyu.edu (D. J. Bernstein) writes:
>If I show you two physical processes you can easily tell whether they're
>the same. They achieve the same physical result---moving things around,
>changing one chemical into another, whatever---in the same way. Patent
>law is founded upon the principle that you can tell when two processes
>are the same. The USPTO has to be able to tell in order to grant a
>patent. The courts have to be able to tell in order to determine
>infringement.

I agree with Mr. Bernstein on this point.

>If I show you two mental processes you won't have a clue whether they're
>the same.

I agree with him here as well.

>The same remains true even if you attach ``insignificant post-solution
>activity'' (that's another legal term, despite Scott's claims to the
>contrary) to a mental process. If the physical applications of two
>mental processes are essential (curing rubber, developing film) then you
>can see whether they do the same thing. If the physical applications are
>inessential (writing bits to disk, or tape, or memory, or your head, or
>reading data from a similar place) then this test disappears.

At this point I disagree. The minute you apply it to disk or tape or
memory to can in fact test if the inputs (i.e. physical state of the
input media or signals on the input lines) were the same, you can tell
if the outputs were the same (ditto), and you can tell if the equipment
mediating the transformation (a computer in this case) were the same.
You can check that the time to perform the transformation was the
same. The accuracy, etc. At this point, you can use the physical
process rules Bernstein gave in his first example and make a
conclusion as to whether this is the same physical process or not. Now
you might name it something different, say "a computer controlled
process for converting an electronic digital signal into a shorter
signal without sacrificing information content" as opposed to calling
it LZW or MW which focusses on the intermediate state and not the
final state. You would not patent LZW per se, but the transformation,
and you might give LZW as a suggested implementation. MW would be
another, equivalent transformation. This is just as if a patent describes a
bicycle, and it gave the suggested implementation of the seat as
leather, but you use naugahide.  

When a patent is stated in these terms it *IS* a PHYSICAL patent,
precisely because it is testable in physical terms, even if some of
the steps along the way involve computations that can be performed
mentally as well as mechanically or electronicly.   It ceases being a
mental process patent because it is testable, and that testability is
what makes the physical pre and post algorithm work "essential" and
not inessential.  Because that's exactly where the benfit lies: in a
disk that can store more, or a faster modem--not in a particular
intermediate state that is invisible.

>This is the fundamental problem with mental process patents. 

I agree, here the fundamental problem with mental process patents is
that they are untestable. But the only thing is that they aren't
granted, so they need not concern us.  There are some physical
process patents that contain steps that can be performed by brains as
well as by electrons and physical relays or cams.  Some would try to
claim that because those parts can be performed by brains that these
are really mental patents--but that is wrong because physical
identicality can be tested in these patents and that isn't possible in
a true mental process. Some would claim that the pre and post physical
representations are inessential.   This is merely a means to redirect
attention back from the measurable  end result to hidden intermediate
result by calling the former inessential and the latter essential. This
is surely the right course of action to argue if you want to overturn
such a patent, but it would just as likely that the patent defendant
would then argue the converse, that it was the physical changes that
were important, and the intermediate steps are just one inessential
way to achieve that. Given both the Diamond vs. Diehr decision and the
relevant quote about the pythagorean theorem there is meat for both
sides of the conflict and I find it a bit presumptious to claim to
know such an outcome in advance with the conflicting reasoning we have
to day. 

> But mental processes
>are inherently unpatentable. You simply cannot tell when two of them are
>the same.

Again, I agree. But Mr. Bernstein won't admit the converse that if I
can frame a process in an entirely physically measurably way (and so
can tell if two processes are physically the same) that it must not be
a mental process.  Mr. Bernstein prefers to reserve to himself the
right to claim aspects of my described physical process as inessential
on his say so, thereby allowing a backdoor way to convert an
inherently physical process to one of his mental process.  He does so
without providing any counterbalancing means to declare intermediate
mental processing as inessential. In any case both would be an appeal
to judgement rather than something definitive, and that was exactly my
point that it is presumptious to conclude that the average legislator
PTO official, attourney, judge or jury member will agree with Mr.
Bernstein as to whether the physical implementation is essential or
not. Indeed members here are more educated than such jurists and we
don't all agree.  And we are also potential jurors.  I wouldn't count
on the decision til the results are final.

-- 

Scott L. McGregor		mcgregor@netcom.com
President			tel: 408-985-1824
Prescient Software, Inc.	fax: 408-985-1936
3494 Yuba Avenue
San Jose, CA 95117


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