谷歌软件专利的解决方案：一视同仁

本文的翻译明显有问题，claim在专利中是权利要求书的意思，因此“functional claiming"显然是功能性的权利要求。Google suggested that functional claims in software ought to be supported by actual algorithms that show how to perform the function in question。 同理，上句应翻译为Google建议软件专利中的功能性权利要求应被实际的算法所支持，该算法应展示如何实现该功能。
整个文章的大背景是阐述软件专利中的功能性权利要求（ 因其他行业/类别中的功能性权利要求是不被支持的），因此跟”声明“无关。

这玩意本来就是这么规定的啊，不用再强调了吧。。。see MPEP 2181

A rejection under 35 U.S.C. 112, second paragraph is appropriate if the specification discloses no corresponding algorithm associated with a computer or microprocessor. Aristocrat, 521 F.3d at 1337-38. For example, mere reference to a general purpose computer with appropriate programming without providing an explanation of the appropriate programming, or simply reciting “software” without providing detail about the means to accomplish the software function, would not be an adequate disclosure of the corresponding structure to satisfy the requirements of 35 U.S.C. 112, second paragraph. Aristocrat, 521 F.3d at 1334; Finisar, 523 F.3d at 1340-41. In addition, merely referencing a specialized computer (e.g., a “bank computer”), some undefined component of a computer system (e.g., “acce****ontrol manager”), “logic,” “code,” or elements that are essentially a black box designed to perform the recited function, will not be sufficient because there must be some explanation of how the computer or the computer component performs the claimed function. Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1383-1385 (Fed. Cir. 2009); Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1366-67 (Fed. Cir. 2008); Rodriguez, 92 USPQ2d at 1405-06.

In several Federal Circuit cases, the patentees argued that the requirement for the disclosure of an algorithm can be avoided if one of ordinary skill in the art is capable of writing the software to convert a general purpose computer to a special purpose computer to perform the claimed function. See, e.g., Blackboard, 574 F.3d at 1385; Biomedino, 490 F.3d at 952; Atmel Corp., 198 F.3d at 1380. Such argument was found to be unpersuasive because the understanding of one skilled in the art does not relieve the patentee of the duty to disclose sufficient structure to support means-plus-function claim terms. Blackboard, 574 F.3d at 1385 (“A patentee cannot avoid providing specificity as to structure simply because someone of ordinary skill in the art would be able to devise a means to perform the claimed function.”); Atmel Corp., 198 F.3d at 1380 (“[C]onsideration of the understanding of one skilled in the art in no way relieves the patentee of adequately disclosing sufficient structure in the specification.”). The specification must explicitly disclose the algorithm for performing the claimed function, and simply reciting the claimed function in the specification will not be a sufficient disclosure for an algorithm which, by definition, must contain a sequence of steps. Blackboard, 574 F.3d at 1384 (stating that language that simply describes the function to be performed describes an outcome, not a means for achieving that outcome); Microsoft Computer Dictionary, Microsoft Press, 5th edition, 2002; see also Encyclopaedia Britannica, Inc. v. Alpine Elecs., Inc., 355 Fed. Appx. 389, 394-95, 2009 U.S. App. Lexis. 26358, 10-16 (Fed. Cir. 2009) (holding that implicit or inherent disclosure of a class of algorithms for performing the claimed functions is not sufficient, and the purported “one-step” algorithm is not an algorithm at all) (unpublished).

If the specification explicitly discloses an algorithm, the sufficiency of the disclosure of the algorithm must be determined in light of the level of ordinary skill in the art. Aristocrat, 521 F.3d at 1337; AllVoice Computing PLC v. Nuance Commc’ns, Inc., 504 F.3d 1236, 1245 (Fed. Cir. 2007); Intel Corp., 319 F.3d at 1366-67 (knowledge of a person of ordinary skill in the art can be used to make clear how to implement a disclosed algorithm). The examiner should determine whether one skilled in the art would know how to program the computer to perform the necessary steps described in the specification (i.e., the invention is enabled), and that the inventor was in possession of the invention (i.e., the invention meets the written description requirement). Thus, the specification must sufficiently disclose an algorithm to transform a general purpose microprocessor to a special purpose computer so that a person of ordinary skill in the art can implement the disclosed algorithm to achieve the claimed function. Aristocrat, 521 F.3d at 1338.

Often the supporting disclosure for a computer-implemented invention discusses the implementation of the functionality of the invention through hardware, software, or a combination of both. In this situation, a question can arise as to which mode of implementation supports the means-plus-function limitation. The language of 35 U.S.C. 112, sixth paragraph requires that the recited “means” for performing the specified function shall be construed to cover the corresponding “structure or material” described in the specification and equivalents thereof. Therefore, by choosing to use a means-plus-function limitation and invoke 35 U.S.C. 112, sixth paragraph, applicant limits that claim limitation to the disclosed structure, i.e., implementation by hardware or the combination of hardware and software, and equivalents thereof. Therefore, the examiner should not construe the limitation as covering pure software implementation.

However, if there is no corresponding structure disclosed in the specification (i.e., the limitation is only supported by software and does not correspond to an algorithm and the computer or microprocessor programmed with the algorithm), the limitation should be deemed indefinite as discussed above, and the claim should be rejected under 35 U.S.C. 112, second paragraph. It is important to remember that claims must be interpreted as a whole; so, a claim that includes a means-plus-function limitation that corresponds to software per se (and is thus indefinite for lacking structural support in the specification) is not necessarily directed as a whole to software per se unless the claim lacks other structural limitations.

非常好的一次互动修正。

学习

看来纵样师兄专利知识不如版权知识好。

看来纵洋师兄专利知识没有版权知识掌握得好。