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a computer method for profile matching, comprising:

a) storing a plurality of profiles in a database;

b) receiving a request for matching;

c) determining potential matches from the plurality of profiles;

d) novel step 1;

e) novel step 2;

...and;

z) novel step n


In the software method claim above, steps (a) to (c) are generic for every dating app, and thus must be recited for the method to be complete.

These steps have been done in various ways and there is no doubt that they can be done.

Those steps are equivalent to the "computer" in how generic they are.

The claim does not need to claim any specific computer.

Steps (d) to (z) are what make this method claim novel.

Question:

  1. Just like the claim does not need to be specific about the type of computer used, why must the claim be specific regarding any of steps (a) to (c)?
  2. Specifically, why does the claim need to specify any specific algorithms for step (c), if this is indeed required? If I do specify a specific algorithm for step (c), then competitors would be able to work around it by using another algorithm. But that doesn't sound reasonable, as the novelty of my invention lies in step (d) to (z).

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Just like the claim does not need to be specific about the type of computer used, why must the claim be specific regarding any of steps (a) to (c)?

It is a special rule that has no analog in other patent fields. In MPF, the "corresponding structure" for a recited function is the computer plus the algorithm that it runs, not just the function itself and/or the computer itself. IIRC, cases where non-MPF functional claims have been upheld exist but are extremely rare. (The system is supposed to be fair but don't expect to get perfectly analogous treatment as Apple does when your case goes up for appeal.)

But that doesn't sound reasonable, as the novelty of my invention lies in step (e) to (z).

In computer arts, one cannot engage in purely functional claiming, even if it's not the point of novelty of the claim.

However there are some possible cheat codes. For example, the claim can take as an input the required potential matches, and perform further processing on them. Then it doesn't matter how they are derived.

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  • Can you give some examples of the cheat codes using my example? How should I reword the claim in my post so that it doesn't matter how the potential matches are derived? Commented Nov 10 at 8:25
  • _Bear: e.g., a computer-implemented method for determining relevant potential matches from a list of potential matches: [novel steps that reference "said list of potential matches" and do something to extract the most relevant ones].
    – bhuff36
    Commented Nov 10 at 16:40
  • _Bear: Please don't copy paste this into your patent application; it's just an example that may not fit 100% to what you are trying to do with your invention.
    – bhuff36
    Commented Nov 10 at 16:42
  • So you just basically moved it to the preamble? Commented Nov 10 at 19:24
  • Instead of referencing "a list of potential matches" in the preamble, can it reference instead "an algorithm that outputs a list of potential matches" or "a process that outputs a list of potential matches"? Commented Nov 10 at 19:48

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