Semiotics 101: Taking the printed matter doctrine seriously

Indiana Law Journal

Volumn 85, Issue 4, 2010, Pages 1379-1443

  Collins, Kevin Emerson ^a  

^a INDIANA UNIVERSITY   (United States)

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EID: 77954987603     PISSN: 00196665     EISSN: None     Source Type: Journal    
DOI: None     Document Type: Article

References (450)

1. The Federal Circuit grounds the printed matter doctrine alternately in 35 U.S.C. §§ 101 & 103, but there is no principled basis for the statutory distinction. See infra Part LB.
2. 1 DONALD S. CHISUM, CHISUM ON PATENTS § 1.02[4], at 1-25 to -26 (2009).
3. In re Lowiy, 32 F.3d 1579, 1583 (Fed. Cir. 1994)
4. (quoting In re Gulack, 703 F.2d 1381, 1385 n.8 (Fed. Cir. 1983)).
5. See infra Parts I.A.1 & 3.
6. See infra Part I.A.4.
7. See infra notes 89-93 and accompanying text.
8. 35 U.S.C. § 101 (2006). See infra Part I.B.
9. One popular casebook dismisses the printed matter doctrine with a single note, stating that "like the mental steps doctrine, the printed matter rule also appears to have declined in importance." ROBERT PATRICK MERGES & JOHN FITZGERALD DUFFY, PATENT LAW AND POLICY: CASES AND MATERIALS 141 (4th ed. 2007). Another casebook tails to even mention the printed matter doctrine.
10. See F. SCOTT KIEFF, PAULINE NEWMAN, HERBERT F. SCHWARTZ & HENRY E. SMITH, PRINCIPLES OF PATENT LAW: CASES AND MATERIALS (4th ed. 2008).
11. See, e.g., In re Smith, 70 F.3d 1290 (Fed. Cir. 1995) (unpublished table decision);
12. Ex parte Shanahan, No. 2004-2334, 2005 WL 191069 (B.P.A.I. Jan. 1, 2005). Parties may cite unpublished opinions issued after January 1, 2007, as precedent. FED. R. APP. P. 32.1. In the Federal Circuit, however, judges may refer to unpublished opinions in new opinions only to note the persuasiveness of the reasoning, not as "binding precedent." FED. CIR. R. 32.1(d).
13. 545 F.3d 943 (Fed. Cir. 2008) (en banc), cert, granted sub nom.
14. Bilski v. Doll, 129 S. Ct. 2735 (2009).
15. The Supreme Court has accepted certiorari to review the Federal Circuit's decision in Bilski, so the validity of the machine-or-transformation test remains unsettled as of the publication of this Article. Bilski v. Doll, 129 S. Ct. 2735 (2009).
16. Bilski, 545 F.3d at 955-56 ("T]e machine-or-tranformation test, properly applied, is the governing test for determining patent eligibility of a process under § 101."). Furthermore, the claim "as a whole" approach to patent eligibility mandated in Bilski overtly conflicts with the "point of novelty" or "patentable weight" approach that structures the printed matter doctrine. See infra notes 94-98, 108-27 and accompanying text.
17. See infra note 145.
18. In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994)
19. (quoting In re Gulack, 703 F.2d 1381, 1385 n.8 (Fed. Cir. 1983)) (internal quotation marks omitted).
20. See supra note 2 and accompanying text.
21. The foremost example of scholarship on semiotics and intellectual property is Barton Beebe, The Semiotic Analysis of Trademark Law, 51 U.C.L.A. L. REV. 621 (2004). Other intellectual property scholars address semiotic issues in substance, if not in name, in copyright scholarship.
22. See, e.g., Justin Hughes, "Recoding" Intellectual Property and Overlooked Audience Interests, 77 TEX. L. REV. 923, 952-63 (1999) (discussing whether copyright should grant an author the right to influence and stabilize the meaning of her work to the public).
23. Patent scholarship has employed the philosophy of language - a discipline that can be thought of as a specialized branch of semiotics - to shed light on how the language in a patent claim describes things and actions. See, e.g., Kevin Emerson Collins, The Reach of Literal Claim Scope into After-Arising Technology: On Thing Construction and the Meaning of Meaning, 41 CONN. L. REV. 493, 536-53 (2008);
24. Craig Allen Nard, A Theory of Claim Interpretation, 14 HARV. J.L. & TECH. 1 (2000);
25. Kristen Osenga, Linguistics and Patent Claim Construction, 38 RUTGERS L.J. 61 (2006);
26. Margaret Jane Radin, The Linguistic Turn in Patent Law (2005) (draft on file with author). To date, however, no patent scholarship has employed semiotics to examine the nature of the newly invented things and actions that can be described by a valid patent claim.
27. See infra note 167.
28. U.S. CONST. art. I, § 8, cl. 8.
29. See infra text accompanying notes 175-77.
30. See infra text accompanying note 175. The mind-centric definition of semiotics employed in this Article follows the approach of noted semiotics scholar Umberto Eco, but it is not the only possible definition of the proper semiotic field. See infra Part II.C.
31. This Article refers to the reconceptualized doctrine alternatively as the sign doctrine and the printed matter doctrine couched in a semiotic framework.
32. But see infra text accompanying notes 249-55 (discussing some historical printed matter cases that the semiotic framework cannot explain).
33. Graeme B. Dinwoodie & Rochelle Cooper Dreyfuss, Patenting Science: Protecting the Domain of Accessible Knowledge, in THE FUTURE OF THE PUBLIC DOMAIN: IDENTIFYING THE COMMONS IN INFORMATION LAW 191, 193 n.4 (Lucie Guibault & P. Bernt Hugenholtz eds., 2006).
34. Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 63 (1998);
35. Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 150-51 (1989).
36. Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 484 (1974).
37. Id. at 481.
38. 35 U.S.C. § 101 (2006).
39. See infra note 191.
40. See infra Part IV.B.
41. This simplistic example is a variation of the facts presented in Lab. Corp. of Am. Holdings v. Metabolite Labs., Inc., 548 U.S. 124 (2006) (Breyer, J., dissenting from the dismissal of the writ of certiorari as improvidently granted).
42. See infra notes 294, 325-29 and accompanying text (addressing this variant).
43. 149 F.3d 1368, 1373 (Fed. Cir. 1998) (articulating the "useful, concrete, and tangible result" test for patent eligibility).
44. 545 F.3d 943, 961-63 (Fed. Cir. 2008) (en banc), cert. granted sub nom.
45. Bilski v. Doll, 129 S. Ct. 2735 (2009) (articulating the "machine-or-transformation" test for patent eligibility).
46. See infra Part IV.C.
47. This Article employs the term "programmed computer" as a semiotic term of art to differentiate it from a computer model. See infra notes 294-95 and accompanying text.
48. In re Russell, 48 F.2d 668, 669 (C.C.P.A. 1931);
49. accord In re Sterling, 70 F.2d 910, 912 (C.C.P.A. 1934);
50. see also In re Reeves, 62 F.2d 199, 200 (C.C.P.A. 1932). The CCPA heard appeals from the PTO before the creation of the Federal Circuit in 1982.
51. See, e.g., Exparte Carver, 227 U.S.P.Q. (BNA) 465, 467 (B.P.A.1.1985)(bringingthe printed matter doctrine to bear on cassette tapes and finding them to be patent-eligible subject matter).
52. 1 CHISUM, supra note 2, § 1.02[4]. The value of the history of the printed matter doctrine in understanding the doctrine's contemporary state is easy to overstate. The courts' track record is not perfect; there are exceptional cases in which the printed matter doctrine probably should have invalidated a claim but did not. See, e.g., Rand, McNally & Co. v. Exchange Scrip-Book Co., 187 F. 984 (7th Cir. 1911) (holding a railroad scrip-book with coupons expressed in monetary value rather than in miles to be a patentable invention). Furthermore, even ignoring errant data points, there is no coherent narrative arc to describe the doctrine's historical evolution.
53. See Morton C. Jacobs, Note, The Patentability of Printed Matter: Critique and Proposal, 18 GEO. WASH. L. REV. 475 (1950) (teasing several themes out of the historical printed matter cases).
54. For example, the printed matter doctrine originated as a corollary of the exclusion of business method from patent eligibility, id. at 476, but the business methods exclusion is today defunct, at least as an express subject-matter-specific exception. Bilski, 545 F.3d at 960.
55. Similarly, the printed matter doctrine and the mental steps doctrine were once recognized as two sides of the same coin. See, e.g., Ex Parte Jenny, 1961 WL 7968 (B.P.A.I. June 30, 1960) (employing principles established in the mental steps doctrine to craft the printed matter doctrine).
56. Although the courts continue to apply the printed matter doctrine, they abandoned the mental steps doctrine during their struggle with the patent eligibility of computer software and programmed computers. In re Musgrave, 431 F.2d 882, 890 (C.C.P.A. 1970).
57. To avoid unnecessary confusion, one definition of information should be identified at the outset and recognized as irrelevant to the type of information that is at issue in the printed matter doctrine. Claude Shannon is widely credited with developing "information theory" - a mathematical theory for "measuring the amount of information that a particular code or channel [can] transmit." J. Mingers, The Nature of Information and Its Relationship to Meaning, in PHILOSOPHICAL ASPECTS OF INFORMATION SYSTEMS 74 (R.L. Winder, S.K. Probert & I.A. Beeson eds., 1997);
58. see generally FRED I. DRETSKE, KNOWLEDGE AND THE FLOW OF INFORMATION 3-39 (1981) (offering a readable overview of Shannon's information theory). Shannon's information theory addresses information in a purely quantitative fashion. It has nothing to do with the "content" of information in the sense of its meaning. As Shannon himself stated, "[fjrequently the messages have meaning; that is they refer to or are correlated according to some system with certain physical or conceptual entities.
59. These semantic aspects of communication are irrelevant to the engineering problem" addressed by information theory. CLAUDE E. SHANNON & WARREN WEAVER, THE MATHEMATICAL THEORY OF COMMUNICATION 31 (1949) (emphasis in original). In terms of Shannon information, both the rolling of an eight-sided die to determine who jumps out of a plane first and the running of a race between eight evenly matched horses are informationally equivalent events.
60. See DONALD M. MACKAY, INFORMATION, MECHANISM AND MEANING 56-57(1969) ("Communication engineers [working with Shannon information] have not developed a concept of information at all. They have developed a theory dealing explicitly with only one particular feature or aspect of messages... their unexpectedness or surprise value."). Shannon's theory should be called the "mathematical theory of communication" in order to avoid confusion with a theory about information in which semantic content is relevant, as it is in the printed matter doctrine.
61. Luciano Floridi, Information, in THE BLACKWELL GUIDE TO THE PHILOSOPHY OF COMPUTING AND INFORMATION 352-53 (L. Floridi ed., 2003).
62. The fact that printed matter challenges have not been brought against gene patents does not mean that the patent eligibility of isolated and purified molecules of DNA under section 101 is uncontroversial. See, e.g., Ass'n for Molecular Pathology v. U.S. Patent & Trademark Office, 669 F. Supp. 2d 365, 397-98 (S.D.N.Y. 2009) (arguing that DNA claims are not eligible for patent protection because they are natural phenomena).
63. Additionally, the permissive nature of the standard for assessing the nonobviousness of gene patents established by the Federal Circuit has been questioned, Arti K. Rai, Intellectual Property Rights in Biotechnology: Addressing New Technology, 34 WAKE FOREST L. REV. 827, 836 (1999) (arguing that the status of DNA as both "a chemical compound" and "more fundamentally" as "a carrier of information" should influence the court's decisions about the nonobviousness of DNA)
64. and the statutory utility requirement invalidates some patents claiming gene fragments, In re Fisher, 421 F.3d 1365, 1378 (Fed. Cir. 2005).
65. See Stephen M. Downes, Biological Information, in THE PHILOSOPHY OF SCIENCE: AN ENCYCLOPEDIA 64, 64 (Sahotra Sakar & Jessica Pfeiffer eds., 2005) (reviewing the origins of the concept of genetic information).
66. Rebecca S. Eisenberg, Molecules vs. Information: Should Patents Protect Both?, 8 B.U. J. Sci. & TECH. L. 190, 196 (2002) (discussing the dual status of DNA as information and molecule).
67. See generally In re O'Farrell, 853 F.2d 894, 895-99 (Fed. Cir. 1988) (offering a basic primer on transcription and translation).
68. In the chemical and biochemical fields, DNA is the low-hanging fruit of the argument that the restrictions on patentability imposed by the printed matter doctrine do not apply to all instances of recorded information with content. However, it is arguably a conceptual error to frame DNA as unique in raising the question of whether molecules are information with content There is an interesting debate over what could be called DNA exceptionalism: is DNA different from other molecules in that it is a "code" or "blueprint" for the cell, or is it simply one information bearer among the many information-bearing molecules implicated in a cell's metabolic pathways? See Downes, supra note 41, at 64. The critique of DNA exceptionalism demonstrates that the DNA-is-information argument can be generalized into an everything-is-information argument, making the rhetorical focus of the printed matter doctrine on information and its content even more problematic. Cf. Dan L. Burk, The Problem of Process in Biotechnology, 43 Hous. L. REV. 561, 582-88 (2006) (discussing the difficulty of using the concept of information to limit the scope of what can be patented).
69. For an argument that analogizes the patentability of software-on-disk inventions and isolated and purified DNA molecules, see D.C. Toedt, Software as "Machine DNA ": Arguments for Patenting Useful Computer Disks Per Se, 77 J. PAT. & TRADEMARK OFF. SOC'Y 275, 276 (1995) ("Program-and data-storage devices encoding computer programs and data seem to be closely analogous to DNA sequences, which are routinely patented.").
70. See, e.g., Arrhythmia Research Tech., Inc. v. Corazonix Corp., 958 F.2d 1053, 1060 (Fed. Cir. 1992) (holding that method and apparatus claims directed to the analysis of EKG signals described statutory subject matter under section 101).
71. See Vincent Chiappetta, Patentability of Computer Software Instruction as an "Article of Manufacture ": Software as Such as the Right Stuff, 17 J. MARSHALL J. COMPUTER & INFO. L. 89, 110-11 (1998) (discussing the advantages of software-on-disk claims for patentees).
72. See 53 F.3d 1583, 1583 (Fed. Cir. 1995);
73. Chiappetta, supra note 47, at 120.
74. Beauregard, 53 F.3d at 1584. But see infra text accompanying notes 55-58 & 89-93 (discussing limitations that the PTO has placed on the patentability of Beauregard claims).
75. 32 F.3d 1579, 1583 (Fed. Cir. 1994).
76. Id. (quoting In re Bernhart, 417 F.2d 1395, 1399 (C.C.P.A. 1969));
77. see also In re Jones, 373 F.2d 1007, 1013 (C.C.P.A. 1967) ("Certainly, there is no 'printing' in this case in the form of words or other symbols intended to convey intelligence to a reader-The user of the disc is not supposed to contemplate it as he would a mathematical table, weighing scale chart, or the like in order to derive some information.").
78. Lowry, 32 F.3d at 1579. But cf. infra note 254 (noting that, in a semiotic framework, the language in Lowry limiting the printed matter doctrine to indicia intelligible to the human mind was not necessary to the holding).
79. Seett/pra Part I.A.1.
80. See supra text accompanying notes 41-44.
81. See supra note 37 and accompanying text (noting that the printed matter doctrine applies to cassette tapes).
82. The concept of a ".txt" file is not intended to be limited to files that display text. As used here, a recording of a song as an MP3 to be played on a portable music player is also a ".txt" file.
83. Lowry, 32 F.3d at 1583
84. (quoting In re Bemhart, 417 F.2d 1395,
85. See infra text accompanying notes 89-93 (describing the doctrine that the PTO has developed to distinguish ".txt" files from ".exe" files).
86. See supra text accompanying notes 50-52.
87. See Dan L. Burk, Patenting Speech, 79 TEX. L. REV. 99, 101-05 (2000) (considering the implications for patent law of treating software as speech by programmers to other programmers);
88. Chiappetta, supra note 47, at 141-43 (discussing an " implementation"and "language" dichotomy in software). Technically, software suffers from a combination of the first-then and both-and problems, as the software recorded on a disk is not intelligible to a computer programmer as code until after it has been processed by a machine.
89. DNA molecules, too, suffer from a combination of the first-then and both-and problems.
90. In re Gulack, 703 F.2d 1381, 1386 (Fed. Cir. 1983);
91. see also In re Miller, 418 F.2d 1392, 1396 (C.C.P.A. 1969).
92. See, e.g., Cincinnati Traction Co. v. Pope, 210 F. 443 (6th Cir. 1913) (transfer tickets);
93. Flood v. Coe, 31 F. Supp. 348 (D.D.C. 1940) (price tags on garments);
94. Mitchell v. Int'l Tailoring Co., 170 F. 91 (C.C.S.D.N.Y. 1909) (device for advertising goods);
95. Benjamin Menu Card Co. v. Rand, McNally & Co., 210 F. 285 (C.C.N.D. Ill. 1894) (combined menu and meal check);
96. cf. Boggs v. Robertson, 13 U.S.P.Q. (BNA) 214 (D.C. 1931) ("[W]here the paper or physical body upon which the matter is printed is designed to be used with the printed matter, as by tearing apart or punching, it becomes... an actual physical article of manufacture within the terms of [the Patent Act].").
97. In re Russell, 48 F.2d 668, 669 (C.C.P.A. 1931).
98. 210 F. 443.
99. Id. at 444-45.
100. Id.
101. Id. at 445.
102. Id.
103. Id. at 444.
104. Id. at 444-45.
105. Id. at 446-47.
106. 31 F. Supp. 348 (D.D.C. 1940).
107. Id. at 348-49.
108. Id.
109. Id.
110. Id. at 349.
111. Id.
112. 418 F.2d 1392 (C.C.P.A. 1969).
113. Id. at 1393-95.
114. Id. at 1394-95.
115. Id. at 1396.
116. 703 F.2d 1381 (Fed. Cir. 1983).
117. Id.
118. Id. at 1382-84.
119. Id.
120. Id. at 1386-87.
121. Id. at 1387.
122. See supra notes 56-58 and accompanying text.
123. Examination Guidelines for Computer-Related Inventions, 61 Fed. Reg. 7478, 7481 (Feb. 28, 1996) [hereinafter Examination Guidelines].
124. Id.
125. Id.
126. See John R. Thomas, Of Text, Technique, and the Tangible: Drafting Patent Claims Around Patent Rules, 17 J. MARSHALL J. COMPUTER & INFO. L. 219, 260 (1998) (asserting that the distinction is "simply a misstatement of fact").
127. 1 CHISUM, supra note 2, § 1.02[4].
128. In colloquial terms, the printed matter doctrine bars the patenting of information when the invention resides in the content of the information.
129. The CCPA seems to have first used this rhetoric in In re Miller, 418 F.2d 1392, 1395-96 (C.C.P.A. 1969).
130. Because it mixes together concepts of patent eligibility, novelty, and nonobviousness, the printed matter doctrine is sometimes applied under the auspices of sections 102 and 103 rather than section 101. See infra notes 136-41 and accompanying text.
131. In re Musgrave, 431 F.2d 882, 889 (C.C.P.A. 1970) (describing the "point of novelty" approach to patent eligibility under the mental steps doctrine in the course of abandoning the mental steps doctrine).
132. 35 U.S.C. § 101 (2006).
133. Diamond v. Diehr, 450 U.S. 175, 189-91 (1981);
134. In re Bergy, 596 F.2d 952, 959-64 (C.C.P.A. 1979).
135. The "intrinsic" properties of a thing are properties that are "entirely about that thing," whereas the "relational" or "extrinsic" properties of a thing are properties that "may depend, wholly or partly, on something else" other than the thing at issue.
136. David Lewis, Extrinsic Properties, 44 PHI. STUD. 197, 197 (1983). Patent eligibility is a relational property of the claimed subject matter under a patentable-weight approach to section 101 because patentability turns on the historical context in which a thing is situated.
137. Diehr, 450 U.S. at 189-91;
138. Bergy, 596 F.2d at 959-64.
139. 35 U.S.C. § 101 (2006).
140. The later claim is a scale-plus-labels claim, whereas the earlier claim was simply a scale claim. However, even the scale-plus-labels claim would be a patentable "machine" under section 101 if it were to be filed as a dependent claim on the earlier date on which the mechanical operation of the scale was nonobvious. At this earlier time, the scale-plus-labels claim would depend from the independent scale claim, and allowing the scale-plus-labels claim to issue would not deprive the public of any rights that it would otherwise possess.
141. See, e.g., infra text accompanying notes 154-55 (discussing a hypothetical claim to a diagram based on its content).
142. 35 U.S.C. § 101 (2006).
143. See supra note 101. There is one type of claim that is per se unpatentable under the printed matter doctrine: a claim that only recites limitations describing the content of printed matter. Here, the patent applicant is by definition alleging that it is the content of the printed matter that differentiates the claimed invention from the prior art. However, the notion that a particular type of claim is per se unpatentable is different from the notion that the artifacts described by the claim are per se unpatentable.
144. Diamond v. Diehr, 450 U.S. 175, 185 (1981);
145. see also Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980) (stating that "laws of nature, physical phenomena, and abstract ideas" are not patent eligible).
146. The distinction between the categories remains unclear, so "laws of nature" is employed here as a shorthand for all of the categories.
147. Diehr, 450 U.S. at 188, 191-92.
148. Id. at 177.
149. Id. at 186.
150. See id. at 191-92.
151. See id. at 192.
152. Id. at 184.
153. Id.
154. Id. at 188-89, 192.
155. Id. at 188.
156. Id. at 188. But see Parker v. Flook, 437 U.S. 584 (1978) (relying on reasoning that strongly resembles the methodology prohibited in Diehr to invalidate a patent claim under section 101).
157. Diehr, 450 U.S. at 189 n.12.
158. See Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 135 (1948) (Frankfurter, J., concurring);
159. Dan L. Burk, Biotechnology and Patent Law: Fitting Innovation to the Procrustean Bed, 17 RUTGERS COMPUTER & TECH. L.J. 1, 26-33 (1991).
160. Brief for 22 Law and Business Professors as Amici Curiae Supporting Appellants, at 17-18, In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) (en banc) (No. 2007-1130) 2008 WL 1842281.
161. In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) (en banc), cert. granted sub nom.
162. Bilski v. Doll, 129 S. Ct. 2735 (2009).
163. Id. at 954.
164. Id. at 961-63.
165. Id. at 955-56. The Federal Circuit framed its analysis in Bilski as a case that was about construing the word "process" in section 101. Id. at 949. It is therefore plausible to argue that Bilski does not apply to object claims describing a "machine, manufacture, or composition of matter" that are most commonly at issue in the core printed matter cases. 35 U.S.C. § 101 (2006).
166. However, this formalistic argument is tenuous. The Supreme Court has generalized from the status of object claims under section 101 to develop rules for method claims.
167. See Gottschalk v. Benson, 409 U.S. 63, 67-68 (1972). Furthermore, the printed matter doctrine applies to method claims that implicate the reading and comprehension of text by a human interpreter.
168. King Pharms., Inc. v. Eon Labs, Inc., 593 F. Supp. 2d 501, 513-14 (E.D.N.Y. 2009).
169. Bilski, 545 F.3d at 958. Despite its categorical statement, however, the Federal Circuit left open the possibility of a point-of-novelty approach coming in through the back door by noting that the machine or transformation implicated in the claim "must impose meaningful limits on the claim's scope"and "must not merely be insignificant extra-solution activity." Id. at 961-62.
170. In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994)
171. (quoting In re Gulack, 703 F.2d 1381, 1385 n.5 (Fed. Cir. 1983)) (internal quotation marks omitted). The Federal Circuit in Lowry and Gulack was discussing the status of the printed matter doctrine as an artifact of section 103, but the same questions pertain to the status of the printed matter doctrine as an artifact of section 101.
172. 35 U.S.C. § 101 (2006).
173. In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007).
174. But see 1 CHISUM, supra note 2, § 1.02(4] ("Under traditional doctrine, 'printed matter' by itself did not constitute a 'manufacture.'"). In the context of the infringement provision in section 271 (g), the Federal Circuit has interpreted the word "manufacture" as a verb to exclude "the production of information." Bayer AG v. Housey Pharms., Inc., 340 F.3d 1367, 1371-72 (Fed. Cir. 2003).
175. In the context of the infringement provision in section 271(f), the Supreme Court has interpreted the word "component" to exclude software "in the abstract" because it is equivalent to the "design information presented in a blueprint." Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449-52 (2007). However, the Court also held that software recorded on a tangible medium was a "component" Id.
176. Diamond v. Diehr, 450 U.S. 175, 185 (1981).
177. See Parker v. Flook, 437 U.S. 584, 593 & n.15 (1978) (stating that these exclusions from patent eligibility address discoveries that simply reveal relationships that have always existed in nature). For the purposes of the argument made here, the author brackets his skepticism about the solidity of the invention/discovery dichotomy.
178. The exclusion of abstract ideas from patent eligibility is complicated by an ambiguity in the notion of an abstract idea. In a first set of "abstract idea" cases, the prohibition on patenting abstract ideas bars the patenting of a claim that is too broad because its scope is defined only by an abstract idea. For example, in O 'Reilly v. Morse, Morse's famous claim eight impermissibly sought to privatize all "use of... electro-magnetism, however developed for marking or printing intelligible characters, signs, or letters, at any distances." 56 U.S. (15 How.) 62, 129 (1853).
179. Every individual embodiment within Morse's claim eight is arguably tied to a tangible, nonabstract machine (overlooking ESP), but the claim attempts to impermissibly privatize an abstract idea because the outer bounds of the claim are established with reference to an abstract idea. Here, the problem is that the language used to delineate the claim relies on an abstract idea. In contrast, in a second set of cases, the abstract-ideas exclusion seems to bar the patenting of immaterial processes such as human thought.
180. In re Comiskey, 554 F.3d 967, 979 (Fed. Cir. 2009) ("However, mental processes - or processes of human thinking - standing alone are not patentable even if they have practical application."). Here, the claim language may be drawn very narrowly - it may describe one very specific mental process in great detail - but the "stuff' described by the claim, namely a mental process, is simply too abstract in some way to be patented. Thus, there is an ambiguity in the notion of an abstract idea: Is the impermissible abstractness located in the describing language or in the things and actions that the language describes? This ambiguity between describing language and the "stuff' described by language has parallels in many other patent law concepts.
181. See, e.g., Collins, supra note 16, at 502-03 (noting that the notion of the "scope" of a claim in patent law can invoke either the meaning of the describing language - meaning-scope - or the size of the set of things that the language describes - thing-scope). The abstract-ideas exclusion has greater resonance with the printed matter doctrine when abstractness is taken as a property of the stuff described rather than a property of the describing language.
182. See supra notes 108-22 and accompanying text (contrasting the patentable-weight approach of the printed matter doctrine to the claim-as-a-whole approach);
183. cf. Comiskey, 554 F.3d at 979 (holding that "a claim that involves both a mental process [that is, an abstract idea] and one of the other categories of statutory subject matter (i.e., a machine, manufacture, or composition) may be patentable under § 101").
184. See, e.g., In re Sterling, 70 F.2d 910 (C.C.P.A. 1934) (finding that the same claims to printed matter were neither novel nor patentable subject matter).
185. See, e.g., Examination Guidelines, supra note 90, at 7481.
186. See, e.g., In re Ngai, 367 F.3d 1336 (Fed. Cir. 2004) (applying the printed matter doctrine as a part of a section 102 novelty analysis to a claim to a kit of chemicals in combination with written instructions);
187. In re Gulack, 703 F.2d 1381 (Fed. Cir. 1983) (applying the printed matter doctrine as part of a section 103 nonobviousness analysis to a claim to a circular band with printed indicia). Judge Linn of the Federal Circuit has even suggested that the printed matter doctrine should be applied as part of the utility doctrine of section 101. In re Nuijten, 500 F.3d 1346, 1365-67 (Fed. Cir. 2007) (Linn, J., concurring in part and dissenting in part).
188. See supra notes 103-07 and accompanying text.
189. See supra notes 105-07 and accompanying text.
190. 35 U.S.C.§ 103(a) (2006).
191. In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994)
192. (quoting In re Gulack, 703 F.2d 1381, 1385 n.5 (Fed. Cir. 1983)) (internal quotation marks omitted).
193. See, e.g., 1 CHISUM, supra note 2, § 1.02[4], at 1-26 ("A question of interest is whether and to what extent the traditional exception for printed matter will survive in view of court decisions that are critical of non-statutory exceptions to the four categories of patentable subject matter.");
194. Dan L. Burk & Mark A. Lemley, Policy Levers in Patent Law, 89 VA. L. REV. 1575, 1672 (2003) ("The Federal Circuit eliminated the long-standing rule against patenting business methods in 1998, and the related 'printed matter' doctrine is on uncertain footing as well." (footnote omitted)).
195. One reason for this silence may be the relatively low economic stakes of printed matter cases involving board games and the like.
196. See R. Carl Moy, Statutory Subject Matter and Hybrid Claiming, 17 J. MARSHALL J. COMPUTER & INFO. L. 277, 279 (1998). Another reason may be that the patent ineligibility of core printed matter claims is so intuitive and self-evidently correct that inventors realize that such claims will never issue.
197. See, e.g., In re Musgrave, 431 F.2d 882 (C.C.P.A. 1970) (criticizing and abandoning the mental steps doctrine);
198. Donald S. Chisum, The Patentability of Algorithms, 47 U. PITT. L. REV. 959 (1986) (criticizing the exclusion of algorithms in the abstract from patent eligibility). Many amicus briefs were filed in the Supreme Court in In re Bilski by representatives of the software, biotech, and accounting industries suggesting that the Federal Circuit's "machine-or-transformation" test interpreted patent eligibility too narrowly.
199. See, e.g., Brief of Amicus Curiae Novartis Corp. Supporting Petitioners, Bilski v. Doll, No. 08-964 (U.S. filed Aug. 6, 2009) (arguing against restrictions on patent eligibility in biotechnology).
200. But see Andrew F. Knight, A Potentially New IP: Storyline Patents, 86 J. PAT. & TRADEMARK OFF. SOC'Y 859, 863-64 (2004) (arguing that storyline patents are eligible for patent protection because the printed matter doctrine "rests on shaky legal authority and, in any event, has been whittled away to an archaic common law has-been").
201. Cf. Thomas F. Cotter, A Burkean Perspective on Patent Eligibility, 22 BERKELEY TECH. L.J. 855, 858 (2007) (arguing that "some of the traditional limitations on patentable subject matter... may yet have much to recommend them").
202. A normative justification of what the PTO and the courts are doing when
203. Cf. Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 34 (2003) (limiting the application of the Lanham Act to avoid creating a "species of mutant copyright law"). The "essence" of copyright, "[w]hat has distinguished copyright from other forms of intellectual property, [and] what has been at its base but not at the base of others," is arguably "that the content of a copyrighted work has always had some nonfunctional aesthetic, informational, or entertaining qualities which are communicated to a human audience." Pamela Samuelson, CONTU Revisited: The Case Against Copyright Protection for Computer Programs in Machine-Readable Form, 1984 DUKE L.J. 663, 749 (1984) (emphasis in original).
204. But see id. at 753 (noting that copyrights in machine-readable computer software run counter to this rule). Perhaps copyright law, including its idea/expression dichotomy, should have the sole authority to determine the public/private balance with respect to what lies at its core, namely to the "informational... qualities" of the "content" that a work "communicate[s] to a human audience."
205. Id. at 749. For copyright law to be the final arbiter of that public/private balance, the printed matter doctrine must keep patent protection out of the mix. Cf. Dennis Karjala, Distinguishing Patent and Copyright Subject Matter, 35 CONN. L. REV. 429, 448-49 (2003) (arguing that the definition of a "useful article" in copyright law should be employed to limit the subject matter of both copyright and patent).
206. 35 U.S.C. § 102 (2006).
207. Id. §103.
208. Id. § 101.
209. For an example of this appendix argument directed at the doctrine of patent eligibility in its entirety, see Michael Risch, Everything Is Patentable, 75 TENN. L. REV. 591, 606-09 (2008) (articulating a "rigorous patentability" standard for patent eligibility);
210. see also Burk & Lemley, supra note 143, at 1642-44 & n.235 (arguing that the role played by the historical section 101 case O 'Reilly v. Morse is today performed by the disclosure doctrines);
211. F. Scott Kieff, The Case for Registering Patents and the Law and Economics of Present Patent-Obtaining Rules, 45 B.C. L. REV. 55, 108 (2003);
212. Kristen Osenga, Ants, Elephant Guns, and Statutory Subject Matter, 39 ARIZ. ST. L.J. 1087, 1088 (2007) (addressing computer software in particular).
213. With respect to patent claims describing paintings, songs, and fictional novels, the appendix argument has a greater intuitive resonance. Cf. Risch, supra note 152, at 633-35 (addressing the patentability of "Books, Art, and Music"). It is true that the artistic creations that are the archetypes of copyrightable subject matter lack the type of technical utility possessed by the archetypes of patentable subject matter such as drugs and methods of manufacturing or using drugs. Cf. Karjala, supra note 148, at 448-49.
214. However, in the mechanical arts, human amusement, entertainment, or aesthetic satisfaction is frequently accepted as a statutory utility. Cf. In re Dembiczak, 175 F.3d 994, 1002-03 (Fed. Cir. 1999) (upholding the nonobviousness of a claim to a trash bag with a jack-o'-lantern depicted thereon);
215. infra note 163 (noting the inability of the utility doctrine to query whether the advance over the prior art is statutorily useful). It is therefore unclear why the amusement provided by a painting to its viewer would not be a statutory utility, too.
216. In this hypothetical, the discovery is derived from Lab. Corp. of Am. Holdings v. Metabolite Labs., Inc., 548 U.S. 124, 125-26 (2006) (Breyer, J., dissenting from the dismissal of the writ of certiorari as improvidently granted);
217. cf. supra text accompanying notes 30-35 (discussing the same discovery). However, there was no claim to a printed diagram at issue in Laboratory Corp.
218. See supra note 38 and accompanying text (defining the printed matter doctrine).
219. The exercise of guessing what a court without recourse to the printed matter doctrine would do if faced with a diagram claim should be taken with a grain of salt Because there is a widespread consensus that printed diagrams should not be eligible for patent protection, see supra text accompanying notes 145-46, courts would in all likelihood contort some doctrine - any doctrine, if necessary - to deny patent protection to printed diagrams. The point made in the following text is only that there is nothing in the internal logic of the validity doctrines that precludes the patenting of a printed diagram. A printed diagram should present an easy case of something that cannot be patented, but - absent the printed matter doctrine in some form - the case is an awkward one.
220. Novelty would be practically assured if the full names of the chemicals were to be printed on the diagram.
221. See In re O'Farrell, 853 F.2d 894, 903-04 (1988) (noting the importance of unexpected results in the nonobviousness analysis).
222. Richard Gruner has argued that artifacts that are not patentable under the printed matter doctrine lack statutory utility: "[W]here new content is recorded in printed matter, no patentable invention is created because the... utility of the newly created printed matter rest[s] in features other than the structure or functional attributes of the entity created."
223. Richard S. Gruner, Intangible Inventions: Patentable Subject Matter for an Information Age, 35 LOY. LA. L. REV. 225, 404 (2001);
224. cf. In re Nuijten, 500 F.3d 1346, 1365-67 (Fed. Cir. 2007) (Linn, J., concurring in part and dissenting in part) (suggesting that the printed matter doctrine should be a part of the utility doctrine). This argument misses the mark. The utility of a printed diagram does reside in part in its structural and functional features: the structure of a printed diagram allows an interpreter to find it meaningful, and the function of a printed diagram is to convey information to an interpreter. Furthermore, the utility of many useful artifacts rests in part in features other than the artifacts' intrinsic properties. For example, the utility of a DNA molecule rests in large part in the structural and functional features of the cellular machinery of transcription and translation. See supra note 43 and accompanying text
225. 383 U.S. 519 (1966).
226. 421 F.3d 1365 (Fed. Cir. 2005).
227. Brenner, 383 U.S. at 533-36;
228. Fischer, 421 F.3d at 1369-78.
229. The utility doctrine also cannot fill the role played by the printed matter doctrine because there is no precedent in the utility doctrine for the patentable-weight analysis that lies at the heart of the printed matter doctrine. See supra notes 94-98 and accompanying text A kit of chemicals plus a sheet of written instructions clearly has statutory utility because the chemicals are useful. However, due to the patentable-weight analysis of the printed matter doctrine, the combination is not patentable if the difference between the prior art and the claimed invention resides in the "content" of the information conveyed by the printed matter. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004) (invalidating a claim to a kit of chemicals plus instructions on how to use them under the printed matter doctrine when the advance over the prior art resided in the instructions).
230. But cf. R. Polk Wagner, Information Wants to Be Free: Intellectual Property and the Mythologies of Control, 103 COLUM. L. REV. 995, 1005-09 (2003) (arguing that the knowledge spillovers of intellectual property protection are inevitable).
231. See infra Part III.C (arguing that printed matter doctrine is an implicit negative corollary of a patentee's disclosure obligations).
232. Semiotics is a sprawling discipline with many competing conceptual frameworks. Ibis Part does not attempt a comprehensive introduction to semiotics.
233. See, e.g., WINFRIED NÖTH, HANDBOOK OF SEMIOTICS (1990). Nor does it attempt a neutral or objective introduction comprised of the most commonly discussed or widely shared principles in the discipline. See, e.g., DANœL CHANDLER, SEMIOTICS: THE BASICS (2002). It does not purport to exhaust the utility of semiotics as a tool to understand legal processes.
234. See, e.g., Susan W. Tiefenbrun, Legal Semiotics, 5 CARDOZO ARTS & ENT. L.J. 89, 96 (1986) (proposing a definition of "legal semiotics"). This Part only presents "Semiotics 101" in a very narrow sense with the pun fully intended: it is a strategically chosen introduction to the basic principles of semiotics (a 101-level course) that the author believes to be the most fruitful background to lead to an explanation of how a semiotic framework can structure the printed matter doctrine (a section 101 doctrine).
235. CHANDLER, supra note 166, at 13 ("Anything can be a sign as long as someone interprets it as 'signifying' something - referring to or standing for something other than itself.");
236. UMBERTO ECO, A THEORY OF SEMIOTICS 17 (1976) ("[A] sign [is] everything that, on the grounds of a previously established social convention, can be taken as something standing for something else."); CHARLES W. MORRIS, FOUNDATIONS OF THE THEORY OF SIGNS 3 (1938) ("[A] sign refers to something for someone."); CHARLES SANDERS PEIRCE, COLLECTED PAPERS § 2.228 ("A sign... is something which stands to somebody for something in some respect or capacity.").
237. Cf. infra note 177 (presenting the competing dyadic model of the sign). Working in the late 1800s and into the early 1900s, Peirce originated discussion of the triadic model in modern semiotics, but triadic models of the sign can be traced back to antiquity.
238. See W.C. Watt, Semiotics, § 1, in 8 ROUTLEDGE ENCYCLOPEDIA OF PHILOSOPHY 676 (Edward Craig ed., 1998). Scholars who have adopted a triadic model of the sign have built on Peirce's work in divergent ways, so there is considerable disagreement on the substantive "details of the triadic analysis even among those who accept that all three components... must be taken into account" 1 JOHN LYONS, SEMANTICS 99 (1977). This Article culls details from Peirce and his interpreters, sacrificing historical accuracy and fine distinctions for brevity and readability when the lost nuances are not relevant to the semiotic framework for patent eligibility.
239. Peirce's preferred nomenclature was the representamen, the interpretant, and the object. See PEIRCE, supra note 167, § 2.228. The terms used in the text of this Article are derived from NOTH, supra note 166, at 89, and they are chosen for their relatively intuitive qualities. (Quotes directly from Peirce's writings in the footnotes, however, use the Peircean terminology.) Departure from Peirce's terminology is par for the course. See LYONS, supra note 168, at 95 (discussing variations in the terminology used to discuss the triadic model of the sign).
240. See, e.g., C.K. OGDEN & I.A. RICHARDS, THE MEANING OF MEANING 11 (10th ed. 1949);
241. CHANDLER, supra note 166, at 30.
242. The sign-vehicle corresponds to the signifler in Saussure's dyadic model of the sign. See infra note 177. Peirce emphasized that sign-vehicles are both immaterial types and material tokens of those types.
243. Cf. PEIRCE, supra note 167, § 2.246 (discussing replicas, sinsigns, and legisigns). Because only tokens of signs can be made, used, or sold by people, and lead to the infringement of patent claims, this Article treats the sign-vehicle as a material entity. In other words, this Article discusses semiotics in the context of what Saussure referred to as parole (an instance of speech) rather than langue (the system of speech). FERDINAND DE SAUSSURE, COURSE IN GENERAL LINGUISTICS 13 (Charles Bally & Albert Sechehaye eds., Roy Harris trans., Duckworth 1983) (1916).
244. PEIRCE, supra note 167, § 3.72 ("cognition produced in the mind");
245. see also LYONS, supra note 168, at 102 (defining the interpretant as "the mental effect produced by the sign" or "the concept associated with the sign in the triangle of signification"). The interpretant corresponds to the signified in Saussure's dyadic model of the sign.
246. See infra note 177. The notion that a sign involves a self-contained concept is a misleading simplification of Peirce's interpretant. Peirce considered the interpretant to be a sign unto itself that can only be understood in terms of further interpretants and thus further signs, leading to a process of "unlimited semiosis." CHANDLER, supra note 166, at 31-33;
247. cf. SAUSSURE, supra note 171, at 110-20 (implying that signifieds are structural entities defined only by their value - that is, by their relations to other signifieds).
248. See infra note 176 (discussing the nature of the referent).
249. Peirce's model demonstrates that signs are wound up with two very different types of meaning. Sense is an ideational or mentalistic phenomenon and is lodged in the interpretant, whereas reference deals with the worldly things implicated in referents. For a detailed presentation of the distinction between sense and reference, as well as an argument about its relevance in the context of claim construction, see Collins, supra note 16, at 536-53.
250. CHANDLER, supra note 166, at 32.
251. The presence of the referent in Peirce's model of the sign does not always tie a sign directly to a material thing, an individual thing, or even a thing that exists in the actual world. See CHANDLER, supra note 166, at 33 (noting that "Peirce's [referent] is not confined to physical things and [that] it can include abstract concepts and fictional entities");
252. OGDEN & RICHARDS, supra note 170, at 9 n.l (noting that the referent should not be "restricted to material substances"). A sign may indicate a particular thing in the world as its referent - that is, the word "Fido" may refer to my dog. Alternatively, a sign may pick out a class of referents in the world - that is, the word "dog" may refer not to my dog but to the species in general.
253. PEIRCE, supra note 167, § 2.232 ("The Objects [of a sign] may each be a single known existing thing... or a collection of such things-"). The referent may be perceptible in the actual world, but, alternatively, it may be simply imaginable, as it may be a class without any actual individuals contained within it.
254. MORRIS, supra note 167, at 5 ("No contradiction arises in saying that every sign has [a referent] but not every sign refers to an actual existent-[A referent] is not a thing, but a kind of object or a class of objects - and a class may have many members, or one member, or no members-This distinction makes explicable the fact that one may reach into the icebox for an apple that is not there-"); PEIRCE, supra note 167, § 2.232 ("The Objects [of a sign] may each be a... thing believed formerly to have existed or expected to exist-"). Even attributes or qualities of things - such as the property blackness - can be the referents of a sign, as can events - such as "a killing." Id. § 1.551 (property);
255. id. § 2.230 (event);
256. id. § 2.232 ("a known quality or relation or fact"). Thus, Peirce technically referred to signs as standing not for objects themselves, but as standing for referents in some respects and identified those respects as the ground of the representamen. Id. § 2.228 ("The sign stands for something, its object. It stands for that object, not in all respects, but in reference to a sort of idea, which I have sometimes called the ground of the representamen." (emphasis in original)).
257. Despite the wide-ranging nature of the referent, see supra note 176 and accompanying text, the presence of the referent in the triadic model of the sign ties the sign to the world in a way that would not be possible in its absence. In contrast, an alternative dyadic model of the sign popularized by Saussure "brackets the referent." CHANDLER, supra note 166, at 16. See generally SAUSSURE, supra note 171 (postulating a dyadic model of the sign). For Saussure, the sign is the combination of a signifier (the analog of the sign-vehicle) and a signified (the analog of the interpretant), and the meaning of a signified is determined not by reference to worldly things but only in relation to other mental signifieds. CHANDLER, supra note 166, at 18-22. Saussure's model is conspicuous in its absolute neglect of the things for which signs stand, dealing with the signified exclusively as "a concept in the mind - not a thing but a notion of a thing." Id. at 16;
258. see also OGDEN & RICHARDS, supra note 170, at 6 (criticizing Saussure for "neglecting entirely the things for which signs stand"). Thus, while both Saussurian and Peircean models of the sign accommodate meaning-as-sense, only the Peircean model accommodates meaning-as-reference. CHANDLER, supra note 166, at 33-34;
259. cf. supra note 174 (discussing the distinction between sense and reference). This Article adopts the triadic model of the sign for three reasons. First, new signs often come into being when researchers discover new facts or formulate new hypotheses about the nature of the actual world, and it is thus useful to be able to talk about the things in the world to which a sign refers when discussing signs as inventions. Second, the referent is a useful descriptive tool for portraying what the Federal Circuit has done in Bilski: data are meaningful because they are sign-vehicles, and Bilski makes the tangibility of the sign's referent dispositive of patentability.
260. See infra notes 317-20 and accompanying text. Third, computer models are meaningful because they are either icons or indices. See infra notes 297-303 and accompanying text. It is difficult to discuss these types of signs using a dyadic model of the sign because they implicate the referent by definition. See infra notes 186-92 and accompanying text.
261. See, e.g., PEIRCE, supra note 167, §§ 2.304, 5.484. The tripartite schema is Peirce's simplest taxonomy, but not his only one. See NÖTH, supra note 166, at 44 (noting that Peirce postulated 59,049 classes of signs); id. at 45 (discussing a ten-category classification).
262. TERENCE HAWKES, STRUCTURALISM AND SEMIOTICS 129(1977).
263. LYONS, supra note 168, at 101 (discussing Saussure's dyadic model of the sign which accommodates only Peircean symbols).
264. CHANDLER, supra note 166, at 22.
265. LYONS, supra note 168, at 100-01.
266. PEIRCE, supra note 167, § 2.299;
267. see also id. §§ 2.292, 2.299, 4.447 & 4.531.
268. Id. § 2.299 ("[A] quality that [an icon's representamen] has qua thing renders it fit to be a representamen [of an icon]."); id. ("A sign may be iconic, that is, may represent its object mainly by similarity."). Iconicity is a scalar variable, as all icons have some conventional attributes not based on resemblance. CHANDLER, supra note 166, at 40-41.
269. PEIRCE, supra note 167, § 4.447 ("A geometrical diagram is a good example of an icon.").
270. Id. § 2.279; id. § 2.282 ("Many diagrams resemble their objects not at all in looks; it is only in respect to the relations of their parts that their likeness consists.").
271. Id. § 4.531 ("Icons are especially requisite for reasoning. A Diagram is mainly an Icon, and an Icon of intelligible relations.");
272. id. § 4.447 ("A geometrical diagram is a good example of an icon-[I]t is of the utmost value for enabling its interpreter to study what would be the character of such an object in the case any such did exist.").
273. Elizabeth W. Bruss, Peirce and Jakobson on the Nature of the Sign, in THE SIGN: SEMIOTICS AROUND THE WORLD 81, 88 (Richard W. Bailey, Ladislave Matejka & Peter Steiner eds., 1978). Brass describes indexicality as "a relationship rather than a quality. Hence the signifier need have no particular properties of its own, only a demonstrable connection to something else. The most important of these connections are spatial co-occurrence, temporal sequence, and cause and effect."
274. Id. Peirce distinguished between "genuine"and "degenerate" indices. PEIRCE, supra note 167, § 5.74. The hygrometer is a genuine index. Through "[i]ts connection with the weather" it "actually conveys information." Id. "[O]n the other hand any mere land-mark by which a particular thing may be recognized because it is as a matter of fact associated with that thing, a proper name without signification, a pointing finger, is a degenerate index." Id. This Article addresses only genuine indices.
275. Id. § 2.285;
276. cf. id. § 2.286 (noting that a barometer is an index of the likelihood of rain and that a weathercock is an index of the direction of the wind).
277. CHANDLER, supra note 166, at 33 (offering these examples among others).
278. Eco, supra note 167, at 21. Signs are widely recognized as constructing reality and mediating human experience, but the precise role that signs play in constructing reality is hotly debated. A strong stance is that signs construct reality per se because "there is no external reality beyond sign systems," whereas a more tempered stance suggests that signs construct the reality that we experience and that "studying semiotics can assist us to become more aware of the mediating role of signs and of the roles played by ourselves and others in constructing social realities."
279. CHANDLER, supra note 166, at 10-11. Given that patent law and discussions of technological progress traffic in concepts such as the "laws of nature" that are discovered and put to work by inventors, the semiotic analysis of patent law presented here takes the conservative approach and adopts the moderate stance.
280. Eco, supra note 167, at 19-21.
281. The embrace of the Peircean triadic sign, rather than the Saussurian dyadic sign, means that this Article already exceeds one common boundary for semiotic inquiry on the lower threshold. Cf. supra note 177 (discussing Saussure's dyadic sign). Saussure focused on the study of "the sign ... as a communicative device taking place between two human beings intentionally aiming to communicate or to express something." Eco, supra note 167, at 15. In contrast, Peirce's definition of the sign "does not demand, as part of a sign's definition, the qualities of being intentionally emitted and artificially produced." Id. at 15. As a consequence, Peircean semiotics readily accommodates the study of both natural phenomena and human behavior not intentionally emitted by its sender as signs, whereas Saussurian semiotics does not See id. at 14-17.
282. See supra notes 175-76 and accompanying text The technical diagram discussed above is also a good example. See supra text accompanying note 154.
283. The field of endosemiotics, or signaling between microbiota, defines the semiotic field in this more inclusive manner. Watt, supra note 168, at 677 (describing a chemical as conveying the semiotic meaning that "there is a dearth of food hereabouts" to a bacterium). See generally THOMAS A. SEBEOK, THE SIGN AND ITS MASTERS (1979) (developing a theory of endosemiotics).
284. Eco, supra note 167, at 16, 19.
285. See Roscislaw Pazukhin, The Concept of the Signal, in 16 LINGUA POSNANœNSIS 25, 41 (1972) (defining the term "signal" but employing the same concept that this Article calls a sign) (emphasis added);
286. see also NOTH, supra note 166, at 112.
287. See Eco, supra note 167, at 16, 19 (asserting that "everything can be understood as a sign if and only if there exists a convention which allows it to stand for something else"and that "behavioral responses [that] are not elicited by convention ... cannot be regarded as signs" (emphasis in original)).
288. Id. (treating "the human addressee [as] the methodological ... guarantee of the existence of signification").
289. The mind-centric school of semiotics has a long history. Augustine defined a sign as "a thing which, over and above the impression it makes on the senses, causes something else to come into the mind as a consequence of itself." Watt, supra note 168, § 1, at 676. Although Eco does not make this connection, the presence of a mind can be identified through the concept of intentionality that is a staple in the intellectual diet of philosophers of the mind. Intentionality is the property of "aboutness" that many mental states possess and that signs are understood to possess in a manner that is derivative of those mental states. See Daniel C. Dennett & John C. Haugeland, Intentionality, in OXFORD COMPANION TO THE MIND 383-86 (1987);
290. JOHN HAUGELAND, HAVING THOUGHT: ESSAYS IN THE METAPHYSICS OF MIND 127-70 (1998). However, an analytical definition of a mind is not critical for the day-to-day operation of a patent regime that adopts a semiotic framework. There is an intuitive difference between minds on the one hand and the mechanical and biological things on the other that will prove dispositive in the vast majority of patent cases. A small set of cases involving claims to zoosemiotics (the study of animals' use of signs), reflexive reactions by humans, and artificial intelligences yet to be defined will prove to be the exceptions to this rule.
291. See infra Part II.B.3.
292. Or, at least, it must be correlated to the slowing down of the bacteria's metabolism in some way, even if the nomic link is not a direct relationship of cause and effect. See supra text accompanying note 188 (noting that nomic, correlative covariation can also lay the foundation for an index).
293. Cf. PEIRCE, supra note 167, § 2.299 ("The [sign-vehicle of the] index is physically connected with its object; they make an organic pair, but the interpreting mind has nothing to do with this connection, except remarking it, after it is established." (emphasis added) (footnote omitted)).
294. Eco, supra note 167, at 17 (emphasis in original). To differentiate the conventional relationships that are semiotic from the nonconventional relationships that are not, Eco coins a distinction between codes and s-codes. Id. at 36-38 (emphasis added).
295. Id. at 17.
296. NŌTH, supra note 166, at 213-14.
297. See supra text accompanying notes 154.
298. See supra notes 170-71 and accompanying text (presenting Peirce's triadic sign).
299. See supra notes 175-77 and accompanying text (discussing the misleading synecdoche).
300. See supra notes 175-77 and accompanying text (noting that the meaning of a sign is not contained within the sign-vehicle).
301. Parker v. Flook, 437 U.S. 584, 593 & n.15 (1978).
302. Id. at 593 n. 15. Many signs have man-made entities, rather than natural phenomena, as their referents. For example, in the rhetoric of Parker v. Flook, a diagram depicting the structure of a man-made chemical depicts the results of an invention, not simply the results of a discovery. Under a semiotic framework, the status of the referent as an invented or discovered entity is irrelevant.
303. Whether the interpretant is novel and nonobvious hinges upon the nature of the discovery at issue. If the researchers were the first to recognize that the correlation might exist, then the interpretant would be novel and possibly nonobvious. However, if the researchers' work simply provided empirical verification for the correlation that had long been hypothesized, then the interpretant might not be novel.
304. But see infra notes 248-55 and accompanying text (discussing how a semiotic framework would, if rigorously applied, expand patent eligibility in core printed matter cases).
305. See supra notes 36-38 and accompanying text (presenting the evolution of the printed matter doctrine to its contemporary technology-neutral formulation).
306. But see infra notes 248-55 and accompanying text (discussing how a semiotic framework would, if rigorously applied, expand patent eligibility in core printed matter cases).
307. See supra Part I.A.2.
308. See supra notes 172, 198-200 and accompanying text
309. The semiotic framework explains the historical kinship of the printed matter doctrine and the now defunct or dormant mental steps doctrine that expressly addressed the patentability of human mental processes. See, e.g., Ex Parte Jenny, 130 U.S.P.Q. 318 (Pat Off. Bd. App. 1960) (employing principles established in the mental steps doctrine to refine the printed matter doctrine).
310. 35 U.S.C. § 101 (2006);
311. cf. Burk, supra note 60, at 113 (discussing the expressive qualities of technology).
312. See infra Part IV. A (discussing the patentability of mechanical measuring devices).
313. Cf. supra text accompanying notes 105-07.
314. See supra text accompanying note 214.
315. See supra Part I.A.1.
316. See supra Part II.C.
317. See supra notes 41-44 and accompanying text (discussing DNA as a form of information).
318. NŌTH, supra note 166, at 213.
319. See supra notes 45-49, 56-58, 89-93 and accompanying text (discussing Beauregard claims).
320. As Pamela Samuelson stated: There is one very simple but important difference between a book which contains a set of instructions about how to do a particular task and a computer program in machine-readable form which contains a similar, if considerably more elaborate, set of instructions on the same subject: The former informs a human being about how the task might be done; the latter does the task. Samuelson, supra note 148, at 727.
321. See supra notes 59-61 (discussing the both-and puzzle).
322. See supra note 201 and accompanying text.
323. See supra Parts III.A, III.B. 1.
324. Depending on the trajectory of the future evolution of technology, there may need to be an exception to the patent eligibility of both-and artifacts. The printed matter doctrine may need to incorporate a safety valve that restricts the reach of patent protection that is similar to the merger doctrine in copyright.
325. See Morrissey v. Procter & Gamble Co., 379 F.2d 675 (1st Cir. 1967) (holding that original expression may be copied without violating a copyright if the expression is but one of a few ways of expressing an idea). For example, assume that the art of computer programming - and the art of compilers in particular - evolves to the point at which the functions performed by a software program can be described by a computer programmer in plain English and automatically translated into executable object code. In this world, it would be very difficult to use the English language recorded on a computer disk to convey concepts about the computer program without infringing a Beauregard claim to the computer program.
326. Any English description of the program that serves as a sign-vehicle that represents the computer's behavior to a human mind would also be a signal or stimuli that causes the computer to perform the behavior. In this future world, sign-vehicles and signals will have merged. If both-and artifacts are patent eligible, the categorical sanctioning of the patentability of both-and artifacts would in effect be the categorical allowance of patents on nearly all of the sign-vehicles that can convey knowledge about the program. If carried over into patent law, the merger doctrine would hold both-and artifacts to be patent-ineligible when a signal must remain beyond the reach of patent protection to ensure that representations of knowledge about an invention reside in the public domain.
327. See supra notes 55-58 and accompanying text.
328. See supra notes 89-93 and accompanying text.
329. The arguments in Part III.B.3 above address the functional-relation exception in the context of Beauregard claims.
330. See infra Part III.A.
331. See supra text accompanying note 222.
332. See supra Part III.B.2.
333. The notion that the two different signifiers can be associated with the identical signified is semiotically naive. Cf. CHANDLER, supra note 166, at 17 (noting that, for Saussure, the signified and signifier were as inseparable as two sides of a page). However, it is a useful simplification for understanding the sign doctrine.
334. See supra text accompanying notes 63-78.
335. 210 F. 443 (6th Cir. 1913).
336. Id. at 444.
337. 31 F. Supp. 348, 348-49 (D.D.C. 1940).
338. 703 F.2d 1381 (Fed. Cir. 1983).
339. Whether the circular configuration was nonobvious raises a question of fact that is beyond the scope of the inquiry here.
340. See supra Part II.B.2.
341. In re Miller is arguably the exception - a case that held an invention to be patentable under the functional-relation exception to the printed matter doctrine but that should not be patentable under the semiotic framework 418 F.2d 1392 (C.C.P.A. 1969). Miller did not involve a newly engineered sign-vehicle. The inventor simply placed new labels on old measuring spoons that instructed the user how to use the spoons in a particular fashion, something along the lines of "if you are making a half-recipe, use this spoon if the recipe calls for a cup of an ingredient."
342. See id. at 1394. If Miller qualifies as patent eligible under the printed matter doctrine, then it is difficult to understand why machine-plus-labels are not eligible for patent protection. See infra Part IV.A (explaining why old machines with new labels are not eligible for patent protection). Pragmatically, however, Miller may be cabined as an exceptional case because it involved factually incorrect labels.
343. See supra text accompanying note 36.
344. The nonobviousness of the physical engineering of the sign-vehicle under section 103 in this simple example is highly questionable.
345. Although the printed matter doctrine was not considered, production efficiencies also explain why the Supreme Court held Morse code itself to be a patentable invention as a "system of signs."
346. See O'Reilly v. Morse, 56 U.S. 62, 86, 112 (1853).
347. Syntax is "the structure of phrases and sentences and the constraints on well-formedness of sentences,"and semantics is "the meaning of words and sentences."
348. VICTORIA A. FROMKIN, LINGUISTICS: AN INTRODUCTION TO LINGUISTIC THEORY 7 (2000).
349. See Jacobs, supra note 38, at 480-81 (discussing printed matter cases involving "a new method of arranging or indexing information").
350. The reconsideration of the historical printed matter cases involving indexes also sheds new light on the Federal Circuit's holding in In re Lowry, 32 F.3d 1579 (Fed. Cir. 1994). In Lowry, the Federal Circuit upheld a claim to a computer-readable data structure under the printed matter doctrine.
351. Id. at 1582-84. Lowry is often taken to stand for the fact that the printed matter doctrine does not apply to computer technology in the same way that it applies to traditional print media.
352. Id. at 1583 (chastising the PTO for "erroneously extending] a printed matter rejection ... to a new field-"). However, from a semiotic perspective, the Lowry holding does not require a computer-specific exception to the general rule. The computer-readable data structure is an organization of data akin to an index. Under the semiotic framework, new, more efficient electronic organizations of computer-readable data should be patentable because new, more efficient spatial organizations of human-readable data should be patentable, too.
353. Cf. supra note 252 and accompanying text (arguing that documents printed in newly invented systems of syntax can be patented without running afoul of a narrowly construed sign doctrine). Despite the fact that improvements in semiotic efficiency do not run afoul of the sign doctrine when it is narrowly tailored to its semiotic principles, there are good reasons not to upset the status quo and recognize them as patent eligible. A bright-line rule that excludes all claims to newly invented printed matter per se simplifies the analysis, as the distinction between inventions in syntax and semantics may not always be self-evident. The overinclusiveness of its exclusion may be justified by invoking the traditional benefit-of-adrninistrability justifications of rules rather than standards.
354. See FREDERICK SCHAUER, PLAYING BY THE RULES: A PHILOSOPHICAL EXAMINATION OF RULE-BASED DECISION-MAKING IN LAW AND IN LIFE (1991).
355. Cf. supra Part I.B (discussing the doctrine's nonstatutory nature).
356. See Kevin Emerson Collins, Claims to Information qua Information and a Structural Theory of Section 101, 4 I/S: A J. OF L. AND POL'Y FOR THE INFO. SOC'Y 11, 22-26 (2008),
357. reprinted in PATENT CLAIMS: JUDICIAL INTERPRETATION AND ANALYSIS (2009) (discussing a structural interpretation of section 101).
358. Dinwoodie & Dreyfuss, supra note 23, at 193 n.4 (2006).
359. Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 63 (1998);
360. Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 150-51 (1989).
361. Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 484 (1974).
362. 35 U.S.C. §112 ¶ 1(2006).
363. Eldred v. Ashcroft, 537 U.S. 186, 216 (2003) (emphasis in original).
364. Kewanee Oil, 416 U.S. at 481.
365. 1 CHISUM, supra note 2, §7.01 ("[O]n issuance.. .the patent immediately increases the storehouse of public information available for further research and innovation.");
366. Timothy R. Holbrook, Possession in Patent Law, 59 S.M.U. L. REV. 123, 133 ("[T]he disclosure in the patent is... designed... to enrich the state of the art contemporaneously with the invention.").
367. Patent law encourages competitors to use the disclosure to "design around existing patents." Intel Corp. v. VIA Techs., Inc., 319 F.3d 1357, 1367 (Fed. Cir. 2003);
368. see also Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996). Competitors can design around a patent only if they have free use of the newly invented knowledge conveyed by the patent disclosure. In addition to this preexpiration role, the disclosure also plays a postexpiration role in that it ensures that the public possesses the right to make the claimed invention after expiration.
369. Grant v. Raymond, 31 U.S. (6 Pet.) 218, 247 (1832).
370. LAWRENCE LESSIG, CODE AND OTHER LAWS OF CYBERSPACE 24-29 (1999) (arguing that there is nothing inherent in the architecture of cyberspace that prevents its regulation).
371. But see Wagner, supra note 164, at 1005-09 (arguing that "perfect control" may be justified in intellectual property because information inevitably escapes the property owner's control and generates externalities).
372. Cf. KARL R. POPPER, OBJECTIVE KNOWLEDGE: AN EVOLUTIONARY APPROACH 73-74 (1979) (discussing subjective and objective knowledge).
373. N.Y. State Conference of Blue Cross & Blue Shield Plans v. Travelers Ins. Co., 514 U.S. 645, 655 (1995);
374. see also WILLIAM N. ESKRIDGE, JR., DYNAMIC STATUTORY INTERPRETATION 118-19 (1994) (discussing Justice Scalia's structural approach to statutory interpretation). The Supreme Court has used a yet more inclusive variant of this canon of structural statutory construction to interpret the Lanham Act in light of other intellectual property laws.
375. See Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 37 (2003) ("[R]eading the phrase 'Origin of goods'... in light of the copyright and patent laws-"). Reading section 101 in light of the Patent Act is a far less ambitious structural move.
376. See supra text accompanying notes 258-66.
377. Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 481 (1974).
378. See supra text accompanying note 223.
379. See supra text accompanying notes 136-41 and accompanying text.
380. See supra notes 99-107 and accompanying text
381. See supra text accompanying note 175.
382. But see In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007) (holding that perceptible but intangible "signals" are not patentable subject matter).
383. See supra notes 108-27 and accompanying text
384. Diamond v. Diehr, 450 U.S. 175, 189-91 (1981).
385. See supra Part III.C.
386. See supra notes 108-27 and accompanying text (discussing this disapproval).
387. See supra notes 120-22 and accompanying text (discussing this potential for mischief).
388. But see supra notes 248-55 and accompanying text (discussing the prescriptive bite of the semiotic framework in core printed matter cases).
389. See supra note 191 and accompanying text
390. This Part does not consider the narrow issue of the patentability of software-on-disk claims which have long been understood to present a challenge for the printed matter doctrine. See supra text accompanying notes 89-93, 234-35 (discussing the distinction between functional descriptive material and nonfunctional descriptive material in Beauregard claims). Nor does it seek to undermine the patent eligibility of computer software broadly writ Cf. Brief of the Software Freedom Law Center as Amicus Curaie in Support of Respondent, Bilski v. Kappos, No. 08-964 (U.S. filed Oct. 1, 2009) (arguing that software "standing alone" is patent ineligible). Many software inventions remain patentable under the sign doctrine. See infra note 326 and accompanying text (differentiating patent-ineligible advances in representation and patent-eligible advances in software engineering).
391. 65 F.2d 159 (C.C.P.A. 1933).
392. Id.
393. Id. at 161.
394. Id. at 159.
395. See supra Part III.B.3 (discussing Peircean indices).
396. The scale gives rise to an index wherein the nomic connection is that the sign-vehicle is caused by the referent. This differentiates the scale from stimuli and signals which can function as indices because the nomic connection is that the sign-vehicle causes the referent See supra note 201 and accompanying text.
397. See 35 U.S.C. § 101 (2006).
398. See supra text accompanying notes 238-39.
399. But see infra note 332 (discussing the borderline cases of novel machines that are nonobvious only because of their semiotic meanings).
400. The notion that the key feature of software is the behavior that it provokes in a computer is explored at length in Pamela Samuelson, Randall Davis, Mitchell D. Kapor & J.H. Reichman, A Manifesto Concerning the Legal Protection of Computer Programs, 94 COLUM. L. REV. 2308 (1994).
401. The discovery that gives rise to this invention is the same discovery discussed above in the text accompanying notes 154-55, but the claimed invention is different.
402. See supra text accompanying notes 175-77.
403. Cf. supra note 200 (arguing that interpretants require intentional mental states and that only minds can possess intentional mental states). The fact that all programmed computers are elaborate Turing machines highlights the semiotically meaningless nature of the data to the computer. See J. DAVID BOLTER, TURING'S MAN: WESTERN CULTURE IN THE COMPUTER AGE 43-47 (1984) (explaining Turing machines).
404. See supra text accompanying note 196 (defining a signal).
405. See sqpra Part II.B.2.
406. See supra note 184 and accompanying text.
407. PEIRCE, supra note 167, § 2.279.
408. See supra Part II.B.3.
409. See supra notes 189, 287.
410. See supra notes 201-06 and accompanying text (demonstrating the reliance of indexical meaning on social convention).
411. Cf. Kevin Emerson Collins, Constructive Nonvolitìon in Patent Law and the Problem of Insufficient Thought Control, 2007 WIS. L. REV. 759, 818-24 (using this shift in meaning to demonstrate the difficulty of administering a claim based on a social convention).
412. 149 F.3d 1368, 1373 (Fed. Cir. 1998).
413. 545 F.3d 943, 961-63 (Fed. Cir. 2008) (en banc). The Supreme Court has accepted certiorari to review the Federal Circuit's Bilski decision, so the validity of the machine-or-transformation test remains unsettled as of the publication of this Article. See Bilski v. Doll, 129 S. Ct. 2735 (2009).
414. State St. Bank, 149 F.3d at 1373-75. The turn to meaning as the determinant of the patent eligibility of a programmed computer originated in the Federal Circuit's earlier case Arrhythmia Research Tech., Inc. v. Corazonix Corp., 958 F.2d 1053 (Fed. Cir. 1992).
415. State St. Bank, 149 F.3d at 1370.
416. Id., at 1371.
417. Id. at 1373.
418. Id. at 1375;
419. see also id. at 1374 ("[T]he mere fact that a claimed invention involves inputting numbers, calculating numbers, outputting numbers, and storing numbers, in and of itself, would not render it nonstatutory subject matter, unless, of course, its operation does not produce a 'useful, concrete and tangible result.'"). Similarly, discussing Arrhythmia Research, the Federal Circuit noted in State Street Bank that "the transformation of electrocardiograph signals from a patient's heartbeat by a machine through a series of mathematical calculations constituted a practical application of an abstract idea (a mathematical algorithm, formula, or calculation), because it corresponded to a useful, concrete or tangible thing - the condition of a patient's heart."
420. Id. at 1373. Accord AT&T Corp. v. Excel Commc'ns, Inc., 172 F.3d 1352, 1358 (Fed. Cir. 1999) (holding a software claim to be patent eligible because the 'TIC indicator represented] information about the call recipient's PIC").
421. Id. at 13 73 n.4 ("By keeping in mind that the mathematical algorithm is unpatentable only to the extent that it represents an abstract idea, this confusion [about the section 101 mathematical algorithm exception] may be ameliorated."). The Federal Circuit's motivation for adopting meaning as the key indicia of the patent eligibility of programmed computers was to implement the Supreme Court's holding in Gottschalk v. Benson, 409 U.S. 63, 70-71 (1972) (holding that claims to mathematical formulas in the abstract are not eligible for patent protection).
422. Cotter, supra note 147, at 895.
423. In re Bilski, 545 F.3d 943, 961-63 (Fed. Cir. 2008) (en banc)
424. cert granted sub nom., Bilski v. Doll, 129 S. Ct. 2735 (2009).
425. Id. at 954 (Fed. Cir. 2008). The concerns about abstraction and intangibility that give rise to the machine-or-transformation test usually play out in method claims rather than product claims. But see In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007) (holding that signals are not patent-eligible "articles" under section 101). For this reason, the machine-or-transformation test rarely applies to artifact claims. Claims to programmed computers are an exception to this rule because apparatus and method claims to software inventions are interchangeable. See infra note 324.
426. Bilski, 545 F.3d at 949. Allowing for some simplification, the claim described a method in which a commodity provider enters into two contracts with two distinct parties: she contracts with a consumer of the commodity who has a given risk position and a third party who has a counter-risk position to that consumer. Id. at 964. This simplified description is misleading to the extent that the novelty and nonobviousness of the claim are at issue, but it communicates the basic facts needed to understand the Federal Circuit's holding on patent eligibility.
427. Id. at 964.
428. Id. at 962-63. The court in Bilski chose not to address the application of the machine prong to programmed computers. Id. at 962.
429. Id. at 963, 964.
430. Id. at 962.
431. In a blog post several days after the Bilski decision, the author offered a semiotic description of the machine-or-transformation test using the terminology from the better-known Saussurían model of the sign: "In the language of semiotics, the tangibility analysis has shifted from a concern about the tangibility of the signifier - the physical configuration of matter that forms a symbol - to a concern about the tangibility of the signified - the informational content of or the thing represented by the symbol." Posting of Kevin Emerson Collins to Patently-O, http://www.patentlyo.eom/patent/2008/l 1/professor-colli.html (Nov. 1, 2008, 2:58 P.M.);
432. cf. supra note 177 (presenting Saussure's dyadic model of the sign). Technically, however, Saussurían terminology is not up to the task of describing the Bilski decision. The machine-or-transformation test turns on the tangibility of the referent, and Saussure employed a dyadic model of the sign that "brackets" the referent.
433. See supra note 177. The Saussurían signified resembles the Peircean interpretant. See supra note 172. So, there is no such thing as a tangible signified (except insofar as a materialist sees a token of a signified in the synaptic firings of the brain).
434. See supra text accompanying notes 306-11.
435. See supra notes 175-77 and accompanying text.
436. E.g., In re Bernhart, 417 F.2d 1395, 1400 (C.C.P.A. 1969) ("[I]f a machine is programmed in a certain new and unobvious way, it is physically different from the machine without that program; its memory elements are differently arranged.").
437. Apparatus claims describing programmed computers and method claims describing the execution of software programs on computers are today presumed to rise and fall together. See, e.g., Arrhythmia Research Tech., Inc. v. Corazonix Corp., 958 F.2d 1053 (Fed. Cir. 1992).
438. Historically, however, method claims were viewed less favorably and arbitrary, formalistic distinctions pervaded the standards governing the patentability of software. See In re Prater, 415 F.2d 1393 (C.C.P.A. 1969) (rejecting method claims and upholding apparatus claims);
439. Julie E. Cohen & Mark A. Lemley, Patent Scope and Innovation in the Software Industry, 89 CAL. L. REV. 1, 9-10 (2001) (discussing the now-defunct doctrine of "magic words").
440. See supra text accompanying note 293.
441. Programmed computers can be nonobvious, patentable machines for precisely the same reasons that mechanical measuring devices can be nonobvious, patentable machines. The software engineering required to make a computer execute the formula y = 1 /x may be a nonobvious advance, in the same way that the mechanical engineering required to make a pointer on a scale move in response to the weight of an object may be a nonobvious advance. See supra text accompanying notes 289-90.
442. More generally, a newly invented computer model is eligible for patent protection under the sign doctrine if an advance over the prior art in software engineering is required to construct the claimed programmed computer. If the computer model is claimed genetically, an advance in software engineering that makes the programmed computer capable of behaving in a manner that is analogous to the newly discovered real-world system (referent) is required for a patent-eligible invention. If the computer model is claimed in a manner that limits the scope of the claim to the use of a particular type of programmed computer, however, only the particular type of programmed computer that is claimed needs to embody an advance over the prior art to achieve patent eligibility.
443. An inventor could, however, still patent an improved programmed computer that executed the formula y = 1 /x more rapidly or with fewer resources. See supra note 326. Therefore, an inventor can claim a computer model of the concentrations of chemicals A and B in human blood if the claim is limited to the use of the improved programmed computer, just like an inventor can claim a scale as an indexical sign if the claim is limited to a scale with an improved mechanism for creating the nomic connection between the weight of the object and the pointer. See supra notes 289-90 and accompanying text See supra Part IV.C.
444. See supra text accompanying note 175.
445. See supra notes 300-03 and accompanying text
446. See supra Part IV. A (discussing the nonpatentability of old machines with new labels).
447. A more difficult problem arises when the chemical analyzer and the programmed computer are both old in the art but the combination of the two is new. In this situation, the invention is novel, but its nonobviousness raises an interesting question. The motivation to combine the chemical analyzer and programmed computer follows directly from the fact that the combination (the chemical-detector machine) can give rise to an index in which the concentration of chemical B in a patient's blood is the referent.
448. When should a nonobvious interpretant render a novel machine nonobvious? This same question complicates the status of newly invented mechanical measuring devices under the sign doctrine. For example, consider the inventor who has discovered the "law of nature" that determines how far a given catapult will throw a stone of a particular weight.
449. See supra text accompanying note 286. Now assume as well that prior-art scales were not very good at measuring the weight of catapult stones, perhaps because the basket in which the thing to be weighed was put could not readily accommodate large stones. If the inventor puts new labels on a new scale that can weigh large stones, is the invention patentable under the sign doctrine?
450. See supra notes 297-99 and accompanying text.