Which Side of the Mushroom did Alice Eat From?

If you don’t know the story, Alice meets up with a hookah-smoking caterpillar who tells her that if she eats out of one “side” of a (round) mushroom, she’ll get bigger, but out of the other side, she’ll get smaller.  He doesn’t fully explain to Alice what will happen to make her taller and shorter, and so here is a fun read:

This time Alice waited patiently until [the caterpillar] chose to speak again. In a minute or two the Caterpillar took the hookah out of its mouth and yawned once or twice, and shook itself. Then it got down off the mushroom, and crawled away in the grass, merely remarking as it went, ‘One side will make you grow taller, and the other side will make you grow shorter.’

‘One side of what? The other side of what?’ thought Alice to herself.

‘Of the mushroom,’ said the Caterpillar, just as if she had asked it aloud; and in another moment it was out of sight.

Alice remained looking thoughtfully at the mushroom for a minute, trying to make out which were the two sides of it; and as it was perfectly round, she found this a very difficult question. However, at last she stretched her arms round it as far as they would go, and broke off a bit of the edge with each hand.

‘And now which is which?’ she said to herself, and nibbled a little of the right-hand bit to try the effect: the next moment she felt a violent blow underneath her chin: it had struck her foot!

She was a good deal frightened by this very sudden change, but she felt that there was no time to be lost, as she was shrinking rapidly; so she set to work at once to eat some of the other bit. Her chin was pressed so closely against her foot, that there was hardly room to open her mouth; but she did it at last, and managed to swallow a morsel of the lefthand bit.

‘Come, my head’s free at last!’ said Alice in a tone of delight, which changed into alarm in another moment, when she found that her shoulders were nowhere to be found: all she could see, when she looked down, was an immense length of neck, which seemed to rise like a stalk out of a sea of green leaves that lay far below her.

Since law professors are, no doubt, going to beat the hell out of the Alice-in-Wonderland connection, I thought I’d stake my claim early. I’ve been reading a lot of law professor views, and several (if not many) think software patents are dead, or largely so.  Kappos, in contrast, thinks Alice ate out of the side that’s going to make software patents larger, or at least not shrink. His view is here.

My guess is Alice is going to cause us all to bang our heads, stub our toes, and wander through Wonderland for many years to come.

 

155 thoughts on “Which Side of the Mushroom did Alice Eat From?

  1. Random For the people who say “well anything is abstract, it’s based on the judge”,

    The same folks have been screeching their same reductio ad absurdum arguments for years. Meanwhile, honest applicants with an ounce of integrity continue to innovate and file well-drafted claims to inventions that nobody will ever challenge under 101. Of course, if you try to discuss those claims with these folks they’ll turn around and assert that those claims are “worthless”. That’s becasue the folks making these reduction ad absurdum arguments aren’t interested in protecting their own contributions to technology. They are interested in “monetizing” patents that they create out of thin air based on their guesses about which deep pocket is ripest for picking.

    Literally every time you try to engage these people about what should be eligible for patenting and what shouldn’t be eligible for patenting they take you on a merry go round ride where their personal beliefs about what is patent worthy remain hidden but their personal beliefs about how st00pit or “communist” everyone else is get vented for the billionth time.

    Try and guess why that is.

  2. 6 re the softie wo fties: I think it funny that you still think of eligibility of software as some sort of “war”.

    We all know that a lot of the other patent tea bxggers are barely-closeted wingnxts with generalized anti-government grievances. This is how they talk about every change that they don’t like. Endlessly bringing up “great wars”, comparing the PTO to Na xis, and imagining that they represent some final bulwark against communism is a routine part of their vain effort to be taken “very seriously.” In reality, it’s just another embodiment of the usual crxtch grabbing you can find all over the Internet when talentless basement dwellers take to the comment boards.

  3. 38 years ago Scotus knew how to say a software claim is unpatentable because it is directed to obvious subject matter:
    Dann v. Johnston, 425 U.S. 219 (1976).

    Along the way since then they chose to do essentially the same thing but call the prior art an “abstract idea.” They should have treated the Alice claims like they did in Johnson.

      1. zzzzzzzzzzzzzzzzzzz, oh, what, wait, Ned spoke again? Did he actually address any of the points provided to him? No? OK, I didn’t miss anything.

        Carry on.

  4. I’ve been reading a lot of law professor views, and several (if not many) think software patents are dead, or largely so.

    I rank law professors slightly higher than 6 as to my choice for unbiased analysis on any case. I’ve made this point before, but it is worth making again — the number of times the word “software” was used in the opinion shares something in common with my name. Oh .. as in “0.” I doubt that was an oversight.

    1. the number of times the word “software” was used in the opinion shares something in common with my name

      That’s only because the applicants didn’t claim “new software.”

      Please tell everyone why the applicants didn’t claim “new software” and chose different words instead.

      1. That’s only because the applicants didn’t claim “new software.”
        ??? Your lack of experience in this area is really showing. Their claims — either directed to system, method, and computer read medium — are how computer software is claimed.

        If the court was going to invalidate the claims because they were directed to “software,” then they would have used the term “software.” It wasn’t that they weren’t aware of it either — certain amici begged them to use this case as a vehicle to invalidate all software patents.

        The fact “software” wasn’t used once in the decision was not an oversight. Despite your fondest aspirations, this case did little to change the landscape of what is patentable and no patentable in the software realm.

        Moreover, only 3 justices would have gone further.

        1. only 3 justices would have gone further.

          You’ve been wrong about pretty much everything for years. Why should we start paying attention to you now?

          1. Um, Grab the decision…
            Open up to the concurrence (hint it’s on the last page)

            Count the author of the concurrence and all of the justice’s that agree as reflected by their willingness to put their names to that part of the overall decision.

            You can count, right?

            Here:
            JUSTICE SOTOMAYOR, with whom JUSTICE GINSBURG and JUSTICE BREYER join, concurring.

            Sotomayor is one.
            Ginsburg is two.
            Breyer is three.

            All done now. Nappy time for you.

            1. The issue of business methods wasn’t directly before the court, and the concurrence constitutes dicta. The fact that three justices signed onto it in this case does not mean there is not majority support for it when the issue is clearly before them.

              1. It definitely means that the other justices did not care enough to sign – dicta or otherwise, Random Examiner.

                Whine some more about lawyers knowing the law better than examiners for me.

              2. The issue of business methods wasn’t directly before the court
                Uh? First, get a law degree. It’ll help during this conversation.

                How do you think the “issue of business methods” would be put directly before the court? Let me give you a hint — it would involve a set of facts involving a business method.

                Did this case involve a business method? Despite that the term “business method” is not well-defined (at least for pre-AIA patents), I think most would say “yes.” Therefore, the issue of whether business methods were patentable were before the court.

                What most non-lawyers don’t get is that the court can frame the issue anyway they want. They can create a broad holding or they can craft a narrow holding that is limited to just the facts of the particular case in front of them. It is up to the court to decide how broad/narrow they want to holding to be.

                Clearly, there were 3 justices advocating for the broader holding of the concurrence — only 3, and 3 is not 5.

  5. A computer is a machine that executes logic.

    Applicants claim not a particular execution of logic (a “means”) but instead the underlying benefit which is all encompassing (the “end”, which is an idea). Supreme court says (again, recently) that an idea that cannot be patented, which has always been the case.

    And then everyone just loses their minds.

    Computer patents are not dead. Computer patents of the scope that many applicants want because it maximizes commercial value are dead. They were, in fact, dead before the ruling and were even dead outside of 101 (see, e.g. Lizardtech or most other WD rulings) but go ahead and freak out everyone.

    An algorithm to improve the functioning of a computer is 101 valid. The idea that you can use any algorithm which would improve the functioning of a computer to improve the functioning of a computer is an idea, and never was eligible. The fact that a computer is designed in such a way to make the particular algorithm not very commercially profitable to patent on its lonesome is not a flaw in patent law, but is instead a benefit whose exclusivity has run and has since been dedicated to the public.

    If you have an algorithm and you think its the best one and you want it patented then go get it. Don’t go overbroad and try and claim your algorithm and also any other algorithm which causes a similar functional result. That’s not contributing an algorithm, that’s contributing an idea. The contribution of an idea was never eligible, and any scope capturing it fails 112, 1st.

    I’ve been saying the above since I joined the board. It’s my singular issue with how terribly patent law is going. Several decisions have come down since then, and I’m surprised there’s still such vocal opposition.

    1. For the people who say “well anything is abstract, it’s based on the judge”, there’s a pretty clear dividing line:

      “Do Steps A, B, C to cause function F” wherein ABC is claimed – eligible and valid assuming ABC are described.

      “Code which causes F” – ineligible and lacking WD for all novel Fs.

      There is virtually never a case in which applicant invented both the first and last way to do a function. Plenty of times applicant never even explains one single way of doing the function, let alone all of them.

      1. There is virtually never a case in which applicant invented both the first and last way to do a function.
        Write enough patents in the mechanical art you’ll realize that form follows function and function follows form. Moreover, what one calls function, another calls form.

        What is a light, an equalizer, a distributor, a switch? Form or function?

        “Code which causes F” – ineligible and lacking WD for all novel Fs.
        WD applies to the specification — not the claims. Also, WD requires possession of the invention — not all embodiments.

        Plenty of times applicant never even explains one single way of doing the function, let alone all of them.

        From MPEP 2163:
        Fonar Corp. v. Gen. Elec. Co., 107 F.3d 1543, 1549, 41 USPQ2d 1801, 1805 (Fed. Cir. 1997) (“As a general rule, where software constitutes part of a best mode of carrying out an invention, description of such a best mode is satisfied by a disclosure of the functions of the software. This is because, normally, writing code for such software is within the skill of the art, not requiring undue experimentation, once its functions have been disclosed…. Thus, flow charts or source code listings are not a requirement for adequately disclosing the functions of software.”).

        1. It’s a doctrine YOU should acquaint yourself with. DoE, properly applied, compares the particular algorithm (the proper scope under 101 and 112) with the particular manner of the particular defendant. It is applied AFTER a valid scope issues.

          You seem to be arguing that DoE enlarges the scope granted, as if the applicant could assert DoE against the office. That has never been the case.

          Give a claim it’s proper scope and it will be valid. Then if the patentee wants to meet their further burden under DoE with respect to a particular defendant, good.

          Attempting to assert DoE on the front end to enlarge the scope and make later litigation for the patentee easier is improper.

          1. (sigh)

            Compare and integrate with a proper understanding of the ladders of abstraction, my padawan. Your request for “particular algorithm” ignores the fact that the invention is not “code.”

            You still evidence a complete lack of understanding of this art field. Your “devotion” to the Malcolm Cult of Picture Claims is most telling. You are clueless as to “proper.”

            1. Your request for “particular algorithm” ignores the fact that the invention is not “code.”

              Exactly what is “the invention”, then, when someone programs an old computer to apply a new algorithm to old data?

            2. “Your request for “particular algorithm” ignores the fact that the invention is not “code.””

              So arrogant for someone who was just told 9-0 that he has no invention at all.

              The code, as you so often point out, is the only distinguishing structural difference between the “off the shelf” computer and the one with new functionality.

              A claim to any box which does a function is invalid under 101 and 112. Disclose and claim the algorithm or just let the PTO kick you in the nuts and take your money, it would save everyone time.

              You again confuse your freedom to describe your invention in different levels of abstraction with the requirement that any particular level must meet the statutory requirements.

              Let me ask you straight out to see how bright you are: Let’s say I make a valid, patented picture claim. I begin to strip away limitations to climb the ladder of abstraction. Do you think that the removal of limitations has any effect on 101 or 112, or does the fact that the picture claim was allowable mean that by definition that there’s no 101/112 issues in the broader claims?

        2. Doctrine of Equivalents is another concept you should probably acquaint yourself with Random Examiner…

          Looks like Billy is desperately trying to articulate some “point” again. Where is his mommy to help him find the words?

    2. Random Examiner, are you familiar with the ladders of abstraction? You appear to be operating in some odd picture-claim world, and do not seem to grasp the fact that over 95% of claims of any value are not picture claims.

      1. Random Examiner, are you familiar with the ladders of abstraction?

        Do you have a point, Billy? Spit it out. Ask your mommy to help you.

        1. The point is asking if Random Examiner has ever heard of the ladders of abstraction.

          That seems clear enough.

          Does “reading” come with that vaunted English as a First Language Skill thing you are so proud of?

        2. Anon has always failed to grasp that removing limitations via abstraction can create 112 and 101 issues as well as 102/103. He appears to be from some untrained school that I see occasionally, where one finds a non-obvious feature and then attempts to strip out other limitations to achieve what they view as the maximum scope. Those claims are often invalid and have been since Morse.

          1. I have never so failed to grasp that such COULD create issues.

            You, on the other hand, have failed to grasp that 95+% of patents of ANY value routinely use the ladders of abstraction coupled with the doctrine of equivalents to obtain the just and proper quid for the quo shared.

            Untrained school…? LOL – lovely AOOTWMD. Maybe you can help DanH/Leopold find those training manuals that he STILL owes me from our earlier conversation – in response to the Chisum and Slusky et al specific references that I supplied.

            Your “training” at the Malcolm School of Short Script Legal Reasoning is showing.

            1. “You, on the other hand, have failed to grasp that 95+% of patents of ANY value routinely use the ladders of abstraction”

              All patents with dependent claims use ladders of abstraction, so I would venture that 100% of patents of value use them. The question is whether the abstraction you seek is valid.

              The mushroom dichotomy in this article is bunk, because it’s never been an either/or situation – the applicants seek overbroad claims, the office apparently issues overbroad claims, and the level of abstraction that is valid for computer claims appears to be a level of abstraction that the industry uniformly feels is not commercially viable.

              I’ll make it more clear for you: There are a host of software patents which contain invalid independents and valid dependents, and had the inventors been told up front that the particular dependents were the only valid ones, they would never have engaged in the application process or failing that, paid the issue fee. The fault for that failure lies in patent attorneys and agents not understanding the natural conclusion of what has been pretty tidy caselaw going back hundreds of years.

              There is further another set of software patents which are wholly invalid because they never teach anything other than an idea: they disclose only functional ends rather than algorithmic means of a computing system. Those specifications would not only never produce a valid claim, but they might have contained an actual invention at the time that the inventor has now lost due to poor drafting by attorneys ignorant of the law.

              It’s pretty clear that what you think is eligible and valid is way off, which for the sake of your clients you may want to reflect on. But keep writing those bad claims, it keeps people like me entertained.

              1. The fault for that failure lies in patent attorneys and agents

                LOL – the “examiner” is strong in this one.

                What a bunch of huey – blame the applicant, blame the attorney… Wah wah wah wah.

                Then turn around and try to claim that the poor examiners are at “such a disadvantage because they don’t know the law, and lawyers do”

                How freak-N pathet1c.

              2. “What a bunch of huey – blame the applicant, blame the attorney… Wah wah wah wah.

                Then turn around and try to claim that the poor examiners are at “such a disadvantage because they don’t know the law, and lawyers do””

                I don’t recall blaming the applicant. The applicant is like a medical patient with an inattentive Doctor, making poor decisions because he lacks informed consent. Regardless, blame is such a negative word for my intent on this particular issue. I would assume the office is thrilled to be in a position where people keep shoveling money at it because they can’t figure out how to craft a valid claim. Debate on these boards is free, in office actions less so. Issuance and renewal fees are non-zero. Unlike elsewhere, the office can’t exactly be tagged as being low quality here, since the issue seems to perplex attorneys and federal circuit judges alike. Keep filing those broad claims.

              3. Random, I think you have hit on an ethic question here about honest advice to one’s client.

                Clearly, as long as State Street Bank stood there, unreversed, patent attorneys could ethically agree to file and obtain patents on business methods.

                After Bilski, there was still the question of whether reciting a computer was enough.

                But the issue is now settled, all aspects of State Street Bank are reversed, and patent attorneys need to be honest with their clients about this.

              4. Crusade?

                Perhaps I will drop my crusade when you identify whether “business” is a machine, manufacture or composition.

                Perhaps if that question is too broad, the lets talk about the following:

                1. printed matter;
                2. math;
                3. fundamental economic principles;
                4. music;
                5. price;
                6. risk;
                7. beauty;
                8. etc., etc., etc.

              5. …and there goes the old CRP merry-go-round of the much much much much much much much Ned CRP-fest of already answered nonsense (otherwise known as Ned-sense)

          2. He appears to be from some untrained school that I see occasionally, where one finds a non-obvious feature and then attempts to strip out other limitations to achieve what they view as the maximum scope.

            That’s the way the softie wofties have been nursed. As we were told here in no uncertain terms, “any skilled programmer” can do the programming once you tell them what the desired function is. Therefore, the softie wofties don’t need to worry about stuff about reciting novel structures, nor do they need to provide any evidence that they have any clue as to what the actual programming would look like. That’s for the little people to worry about, not the sooper dooper genius patent attorneys who “innovate” “new paradigms” at the firm Christmas party with their wives and children.

      2. I seem to be grasping that claims of the scope you suggest in the computer context are invalid, and by definition have no value.

        The patent laws do not require you be granted a scope that is commercially valuable, the patent laws only require you be granted a scope that the inventor is in possession of, enabled, is particularly defined and actually constitutes a discovery or invention – not random logic expressions and abstract ideas.

        As I just got through saying, the fact that a computer is designed to allow multiple paths of achieving a similar result is a benefit which belongs to the public. No amount of complaining about commercial value will put it back into the private sphere.

        1. As I just got through saying, the fact that a computer is designed to allow multiple paths of achieving a similar result is a benefit which belongs to the public

          Um, after the twenty years of a new invention’s quid, sure. But you seem only too eager to take the “House/Morse” fallacy position that all future inventions are already in the ‘oldbox.’ You just cited Morse to support your view, and yet fail to see the irony that you want to violate that same case in your pursuit of denying patent protection.

          I bet that you don’t even realize that irony, so focused as you are on your beliefs.

          1. But you seem only too eager to take the “House/Morse” fallacy position that all future inventions are already in the ‘oldbox.’”

            The use of the word “invention” is conclusory. A computer exists in the prior art, and anyone in the art knows that a computer will do anything you tell it to do (and further there is a legal presumption that merely mentioning what you want to do enables the doing, since coding is held to be mere transcription work, a poor decision if ever there was one). If a new specification discloses “You can use a computer to do your taxes” with nothing more, the only thing the “inventor” has added is the knowledge that you can create logical rules to do one’s taxes. That’s an idea, and it’s not an invention, which is why a claim to “a computer containing code to do taxes” is an ineligible claim. It’s not invalid because it’s “oldbox” its invalid because its “oldbox + non-protectable-idea”.

            Now if the specification describes the means: the algorithm, the inputs, the manner in which the function of “doing taxes” is accomplished and claims those means, now the applicant has an invention there. Claims directed to those means may still be overbroad or obvious, and it would be wise to be detailed in the algorithm disclosure, but at least you can say you’ve gotten to an invention rather than an idea.

            “you seem only too eager to take the “House/Morse” fallacy position that all future inventions are already in the ‘oldbox.’ You just cited Morse to support your view, and yet fail to see the irony that you want to violate that same case in your pursuit of denying patent protection.”

            Morse is a case that if decided today would sound in 101, enablement, WD and indefiniteness. It said far more than Morse was wrong for thinking that future inventions are already in the oldbox. That being said, a specification could contain the most meticulous detail about a newbox – if the independent claim is just going to claim oldbox + idea, it’s still going to be ineligible.

            1. Random you appear to be thoughtful on the subject, why do you reach the conclusion that “the algorithm, the inputs, the manner in which the function of “doing taxes” is accomplished” are the “means”? Blatantly irl the “means” is the physical computer with a bunch of transistors/capacitors etc. as a simple factual matter. You could have a thousand experts testify on that and to a man they will all testify that those are the “means” as opposed to your “algorithm etc” being the means.

              1. “why do you reach the conclusion that “the algorithm, the inputs, the manner in which the function of “doing taxes” is accomplished” are the “means”?”

                Because computer programming is an art which definitively controls the transistors and capacitors. It would be valid to describe the invention in terms of the mechanical states, but that’s unnecessary, just as it would be valid to describe the makeup of each transistor, but that’s also unnecessary.

                Different programming, however, would result in different structural states, which is why the algorithms are necessary.

              2. Like anon just said in a round about way, we’re not talking about programming. We’re talking about the algorithm etc.

                Also, I’m not particularly interested in why algorithms are “necessary” (for some x?). To be clear, we probably disagree on that anyway, but let’s set that aside for now.

                I just want to know how you reached your conclusion that “the algorithm, the inputs, the manner in which the function of “doing taxes” is accomplished” are the “means”? Again, as a simple factual matter, a thousand experts will testify differently. And I’m pretty sure that this is a simple factual matter.

                Might you address why you reach your conclusion in your next response?

              3. Like anon just said in a round about way, we’re not talking about programming. We’re talking about the algorithm etc.

                LOL – my straight path only looks ’round about” because 6 cannot bear to agree with me.

                That’s pretty funny.

      1. (sigh)

        Return of the “but-I-Slept-at-a-Holiday-Inn-last-night” armchair attorney.

        You do realize JR, that 112(f) is not the be all and end all of including language using functional descriptions in claims properly, right? (you probably want to avoid leaning on the rantings of Malcolm et al on this point).

    3. RandomGuy, rather than saying an idea is not patentable, why don’t you say an idea is not statutory – not being a machine, manufacture or composition?

      And now that we have Prometheus and Alice rely upon, the old cases that looked to whether the novel portion of a claim was eligible are somewhat restored. I give for your consideration Guthrie v. Curlett, 10 F.2d 725 (2d Cir. 1926) where the court determined that that which was new was ineligible and that which was eligible was not new. To the same effect, In re Russell, 48 F.2d 668 (C.C.P.A. 1931), The case that determined in the CCPA that printed matter was ineligible because it was neither an Art, machine, manufacture or composition even though the index cards with which the printed matter was claimed was certainly a manufacture.

      That which is new is ineligible, that which is eligible is old.

      1. Ned: RandomGuy, rather than saying an idea is not patentable, why don’t you say an idea is not statutory – not being a machine, manufacture or composition?

        Indeed. And neither are “new functionalities.”

        But the “principled” folks know — they just know! — that the 1952 patent act was intended to allow clever attorneys to protect previously ineligible subject matter merely by reciting some magic words. The magic words may change but there must always be magic words or else they’ll take their ball and go home and we might as well just throw our computers in the trash then. These people really do believe that they rule the world. Anybody who disagrees with them must be either a communist or a thief or just plain ignorant.

        Yup. And it’s their great “arguments” about all of us “communists” that are clearly behind all their recent victories.

        LOL.

        1. The case law prior to ’52 seemed clear on the mode of analysis: if what was new in a claim was ineligible, the claim as a whole was eligible.

          This whole fiasco about software and business methods being eligible was because certain large companies pushed their patentability and certain judges on certain courts agreed with them. The sustained effort of the CCPA to allow the patenting of software regardless of what functionality was new resulted in these same interests pushing for the formation of the Federal Circuit to put that court solely in charge in an effort to “turn things around.”

          Softie woftie’s indeed. We could name names here, and name certain companies. But we all know who they were and are.

          Because these folks will not go away, I predict they will come up with something — perhaps an effort to amend 101. Who knows.

          1. Or maybe (gasp) asking Congress to take back what the Court has done here…

            Gee, like Congress hasn’t acted in the past to constrain an activist anti-patent Court….

            Oh wait, they did.

            History repeats.

      2. “rather than saying an idea is not patentable, why don’t you say an idea is not statutory”

        I often use them interchangably, but if I was being more intent on conveying the most correct message I would use the word patentable in this situation all the time.

        You are of course correct it is not statutory. However, the “improvement” by the applicant is the addition of an idea, which it is clear from a constitutional standpoint that Congress lacks authority to impart an exclusion to. Thus we need not consider if the idea falls into a statutory class (as the statutory grant could not exceed the constitutional grant in any event). This avoids the Congressional intent argument which appears to hold big favor around these parts.

        “Guthrie v. Curlett, 10 F.2d 725 (2d Cir. 1926) where the court determined that that which was new was ineligible and that which was eligible was not new”…”The case that determined in the CCPA that printed matter was ineligible”

        Yes, this goes to the Court’s complaint about “artful drafting.” It would just be smart to take each claim and view it as “what is the nature of the invention here” and when the most appropriate response is that it a claim to something admittedly old with a new idea attached, it should be viewed as a claim toward the idea itself.

        1. LOL Random Examiner instantly fails in his efforts:

          more intent on conveying the most correct message I would use the word patentable in this situation all the time.

          Perhaps you need to take note of the phrase/words: patent eligible and patentable.

          Hint: there is a very real and very critical difference that, as an examiner, is pretty important that you know.

          As to your even trying to pick up on Guthrie – spectacular FAIL (now whine about attorneys actually knowing the law some more).

          1. Did you even read the rest of it? We tend to use “patent eligible” to describe things which meet the statutory test of 101. I specifically stated that my point is not wade into the statutory test. Certain members of this board, as well as the federal circuit, tend to be distracted by shiny objects (“the system has a computer, how can you say a computer is not a machine?”) when talking about 101, which is why patent eligible is the precisely wrong terminology.

            Whatever Congress’ grant to secure rights to discoveries means, it cannot include ideas qua ideas (for the same reason that copyright cannot extend to ideas) as the federal government lacks authority to prohibit idea expression. If 101 were to specifically include “ideas” then it STILL would not be patentable because regardless of how “patent eligible” 101 nominally makes it, the inclusion of “idea” would render it unconstitutional.

            The court wishes to be more nuanced (as it negates the need for a constitutional interpretation) in saying Congress did not intend to include abstract ideas within 101. That nuance is lost on this board (“where’s the textual support for that????” they cry). It’s a lot easier to hit you over the head with a sledgehammer and say that Congress couldn’t have done it, and even if you were right, you’d be wrong.

            1. Random, citing cases such as Guthrie are going to get you a long way while discussing the constitution will not — just a clue.

              In re Russell, 48 F.2d 668 (C.C.P.A. 1931)(printed matter) relied on Guthrie.

              Also see, In re Patton, 127 F.2d 324 (C.C.P.A. 1942) that cited to Hotel Security, the case Guthrie relied on for its holding.

              Rich in State Street poo-pooed Hotel Security as not holding the subject matter unpatentable on nonstatutory grounds. Rich never discussed Guthrie that clearly held the claim before it nonstatutory. Nor did Rich discuss In re Russell.

              Rich dismissed In re Patton as being a case about prior art. Really? The case dismissed the business method aspects has having no patentable weight, and the apparatus described and claimed as old and conventional.

              Patton is simply another case where that which was new was ineligible and that which was eligible was old.

              Prometheus and Alice both say that such cases are really 101 cases.

              Patton: link to scholar.google.com

              Russell: link to scholar.google.com

              Guthrie: link to scholar.google.com

              1. (sigh)

                Once again Ned – you err in several critical dimensions, not understanding what you read and providing an incorrect takeaway (your treatment of printed matter is wrong top to bottom) and not treating abrogated cases appropriately by ignoring what happened by the Legislature (you know, the branch of the government actually sanctioned to write patent law) AFTER the cases you cite.

                You do know that it is malpractice to miscite cases as you are doing right, were you to be doing this with an actual client?

                Your willingness to misshape the law in order to reach alignment with your agenda is way past alarming (the ridicule you ignore in regards to the “6 is a genius” comments should have tipped you off).

              2. Indeed, anon, I did miss cite the Guthrie case. There are two Guthrie cases, and I cited to the wrong one.

                The is cite is this one: Guthrie v. Curlett, 10 F.2d 725 (2d Cir. 1926). link to scholar.google.com

                I note with interest, anon, that your consistent form of argument on this point and on these cases either that they do not stand proposition I quote them for, or that they are no longer good law. But you never, ever, tell us what is wrong with my citation to the cases, and the extent you did one time, quote material from Guthrie, it actually supported the reason I cited it. Your attempt on this occasion illustrated, dramatically illustrated that you didn’t understand the case or the material you quoted.

                It is clear these cases use the form of analysis adopted by the Supreme Court in Prometheus and in Alice. If that which is new is in eligible, and if that which is eligible is old, the claim as a whole is ineligible or, as some would contend the better term to be, unpatentable.

                Then I asked you to identify any case that overruled these cases. You never did. You simply contend without any authority whatsoever that the that the cases are not good law.

                I hope you realize that this form of argument and discussion is worth than useless.

              3. But you never, ever, tell us what is wrong with my citation to the cases,

                Completely untrue, as I walked you through a simple Set theroy example of why you butchered the Russell case.

                It was you that then ignored the points I made, and went on a rampage, vom1ting the case everywhere with a clearly erroneous and twisted take-away. I called your attention back to my patient explanation time and again and it was you that refused to discuss or point out any (perceived) flaws in my explanation.

                The AOOTWMD trick does not work for Malcolm. I suggest that you do not try to use the same tactic.

                As to a “case that overruled a case,” here too, it is you that simply refuses to listen. I pointed out that you cite to a pre-1952 case, that ends with a term of art that was clearly dealt with in the CHANGES made by the 1952 law.

                And once again, you went on a binge of using the very same bad case law to ignore the change in law that CONGRESS (you know, the actual branch of the government that has the power to write law per our constitution) made.

            2. Did you read either the beginning (noting the date) or the end (noting the term)?

              And yes, I read it complete. And yes, as a lawyer, I understand it complete.

              Whine a bit more about why that is an advantage for me.

  6. One disingenuous thing about the opinion was the lack of discussion of the presumption of validity. This issue was briefed by both sides. Is there any presumption of validity with regard to 101 or not? It seems fundamentally unfair to me to invalidate patents which the applicant paid money for and the USPTO examined and issued without at least some sort of presumption of validity. Even in view of new uncited art the presumption still exists, why should it not exist with regard to 101 when there is nothing new on the table?

  7. Blame for “take process X” or execute it on a “computing system”, or make the process “computer-implemented” should be laid entirely at the feet of those that developed the USPTO examination guidelines, WRT 101. Regardless of the technological innovation behind the claim, the USPTO required system or method claims to include these vapid limitations to overcome rejections under 101. Claims that include these ridiculous buzz words will now be targeted for invalidation, regardless of whether they actually are abstract or not, or whether they solve a technical problem.

    Practitioners are forced to comply with USPTO guidelines, even when those guidelines are themselves foolish or contrary to controlling law, since most Examiners are utterly incapable of understanding that USPTO guidelines don’t have the force of law.

    1. B-b-b-b-but you should not appeal and just take the suggested amendments because otherwise your are just a greedy grifter.

      /off sacrasm

    2. Blame for “take process X” or execute it on a “computing system”, or make the process “computer-implemented” should be laid entirely at the feet of those that developed the USPTO examination guidelines

      Those guidelines weren’t developed in a vacuum.

      They were developed with “input” from “customers” like the guy at the last meeting who insisted that correlations are eligible for patenting, and from people who complained that if they didn’t get their “on a computer” claims then nobody would write software because … investors!!! Meanwhile, Lord Kappos was busy shepherding patent claims to methods of deciding who gets to go to the bathroom next on a plane … “on a computer.”

      Reap the whirlwind. All of these smackdowns were predictable and necessary. In fact, they were predicted and the reasons they are necessary have been set forth for you ad nauseum. If you are suprised to see that reasoning being adopted by the courts then you either haven’t been paying attention or you’ve been spending all your time inside one of the Internet’s patent attorney lurvin’ echo chambers.

      1. You know how I know that you’ve never prosecuted a patent application before? I’ll give you three gueses and the first two don’t count.

    3. Bluto, I somewhat agree. The PTO had the idea that if a claim nominally recited a computer or a CRM, that it was statutory. Where did they get this idea? Judge Rich, especially from his dicta in Alappat about programmed computers being eligible.

      Also, the Supreme Court, in Diehr, cited Rich’s diatribe in In re Bergy with approval.

      Later, we got State Street Bank, Rich’s crowning achievement.

      What is the PTO to do under these circumstances but to find 101 subject matter where the claim nominally recited a computer, even though such a result was flatly inconsistent with Benson.

      Now, all these claims that have been held eligible because such limitations were added are suspect. This is a proximate result of the PTO not fighting Rich tooth and nail so that the Supreme Court could rule. It is a wonder that the PTO changed it mind at all and fought Rich posthumously in Bilksi. But it seems to have done so in response to the rising troll problem, and the complaints of banks and retailers who were routinely sued on business method patents.

      1. flatly inconsistent with Benson.

        LOL – What was that quote… “We do not so hold”…?

        The CRP merry-go-round is operating ladies and gents.

      2. in response to the rising troll problem, and the complaints of banks and retailers who were routinely sued on business method patents.

        LOL – you mean the fabricated and overblown “Troll” problem created and fanned by Large Corp?

        You do know who coined the term “Troll” right? You do know why they coined that term, right?

        Connect the dots people.

  8. And the ones that mother gives you don’t do anything at all.
    Go ask Alice.
    ***
    I think she’ll know
    ***
    When logic and proportion
    Have fallen sloppy dead.
    Remember what the dormouse said.
    Feed your head.
    Feed your head.

    – Jefferson Airplane

    1. Yes, Jefferson Airplane is getting some play among profs too. Alice Cooper, anyone? “School’s out for… ever!”

  9. The best drawings of Alice were made by the Victorian cartoonist John Tenniel. His image of Alice at the end of the trial scene with the arch of cards over her head is hard to beat in the present context.

  10. And the best part is that 101 is hardly the only way to go after and decimate a lot of the jnky computer-implemented jnk that’s out there.

    More to come, folks!

  11. The easy part is this. Business method patents are dead, dead, dead. Unless some rogue panel of the Federal Circuit momentarily raises one up from the dead all “Reanimator”-like. (Or perhaps I am thinking of “Frankenhooker”.) In other words, you there who have been busy spending millions of dollars to build up portfolios of stock trading strategy patents for the big New York banks had best hope that the GC you report to never reads this decision (or Bilski or Myriad) for himself.

    Software patents? If they look like a business method patent or like anything that looks like anything in Alice or Bilski, not valid. Otherwise, who knows? But if they are valid or not, what have been the standard claiming strategies in getting them clearly are a waste of time. Reciting the usual hardware verbiage counts for nothing. Unless, of course, you are faced with the right panel at the Federal Circuit.

    1. Egon,

      3, the new 4, is still not 5

      the usual hardware verbiage

      Because machines are not machines – and the only valid claim is one not yet before the Court…

      History repeats.

      1. Because machines are not machines

        And pencils aren’t articles of manufacture.

        Deep stuff from the quintessential patent txxbxgger.

        As I’ve said before, l 0ser, you and David need to tell us exactly how you propose to deal with claiming [old eligible subject matter]+[new ineligible subject matter]. That issue is never, ever going away and you’re mindless whining about “the 1952 patent act” or any of the other gxrbge you try to float here isn’t going to change that fact.

        If you don’t like the reasonable attempts of the Supreme Court to rescue patent law from the lowest form of pond fe eders out there, then grow up and tell everybody exactly what Congress is supposed to do.

        We know that “anon” isn’t capable of articulating a coherent thought on this topic, but surely David is capable of coming up with something.

        1. As I’ve said before [insert vap1d pet theory here]…

          lol – yes, Malcolm, and you and your sockpuppet farm are STILL the only ones saying that.

          Even after the Alice decision.

        2. If you don’t like the reasonable attempts of the Supreme Court to rescue patent law from the lowest form

          You kind of miss the point of the separation of powers doctrine.

          It is not a matter of “exactly what Congress is supposed to do,” it is a matter of exactly what Congress did do.

          Pay attention.

          1. the point of the separation of powers doctrine.

            This is something that faux-“principled” people like you bring up whenever the case doesn’t go the way you want it to go.

            what Congress did do

            Nobody believes that in 1952 Congress decided that you could claim a method of thinking a new non-obvious thought by appending a prior step of drinking a cup of coffee or “doing it while sitting on a chair.”

            Did they “accidentally” do that by writing some of the worst legislation ever written? You seem to be the expert and yet you never seem to complain about the 1952 patent act. You complain a lot more about the law prior to that act. So which is it?

            Were the writers of the 1952 patent act complete m0 r0ns who couln’t legislate themselves out of a paper bag? Or do you believe that people should be able to protect ineligible subject matter simply by sticking some old conventional eligible subject matter into the claim? Or do you believe that all processes — included useful mental processes and useful arithmetic processes carried out with pencil and paper — are eligible for patent protection under the 1952 patent act? Which is it?

            Honestly, these questions are intended for David and not you. I could care less what you think about anything since you’re obviously a s 0 ci0 path with zero interest in an honest discussion about this topic. You’re just another cl 0wn who drank waaaay too much patent kool aid and now you’re too high to come down from the rooftop. Here’s a suggestion: do everyone a favor and flap your wings.

            1. Nobody believes that in 1952 Congress decided that you could claim a method of thinking a new non-obvious thought by appending a prior step of drinking a cup of coffee or “doing it while sitting on a chair.”

              Great – nice strawman, except no one here (except you) keeps on trying to prop up that vap1d position.

            2. with zero interest in an honest discussion about this topic.

              Says the guy who has states that blog posts need not be concerned with intellectual honesty because this is not a court of law.

              Your duplicity does not work out too well for you Malcolm.

              1. Says the guy who has states that blog posts need not be concerned with intellectual honesty because this is not a court of law.,

                Show everyone the quote you psy cho tic a hole.

              2. Why?

                Are you denying you said such?

                Like you denied voluntarily making an admission against interests regarding the exceptions to the judicial doctrine of printed matter when the blog moved to the Disqus system, then ate those words when the archives returned?

                and what will you do if I supply the hyperlink? Change your ways? Post with intellectual honesty?

                Why wait? I have long invited you to set your short script aside and post with just a little integrity? Stop the ad hominem, stop the AOOTWMD, stop the mischaracterizations of law, mischaracterizations of law and mischaracterizations of what other’s post.

                What’s stopping you?

              3. Why? Are you denying you said such?

                Yes. Show everyone the quote and the context.

                You previously accused me of being racist because (allegedly) I used the “n word” here. You were asked in that case to S T F U or provide the quote and the context. Do you remember how that turned out?

                Step up to the plate, you sad little p s y c h o t i c t w i t.

              4. Do you remember how that turned out?

                Sure – with you confirming everything I said.

                Thanks, by the way.

                More vap1d **click-meds** from your short script….?

                Keep confirming that I am correct Malcolm – you just can’t help yourself, can you?

              5. Yes. Show everyone the quote and the context.

                Lol – ‘the context’ …? Like the context of your massive ongoing treatment of the exceptions to the judicial doctrine of printed matter?

                ‘Context’ like that?

                Hypocrite.

              6. Context like claim terms being integrated versus your “pet theory” B$?

                Context like mental steps as part of a claim versus a claim completely in the mind?

                Context like the number of times you have provided an actual 1ie of mine when I have asked you to so produce after one of your AOOTWMDs?

                LOL, shall we continue on out little “context” exposition?

                (Hint: this does not turn out well for you)

            3. You complain a lot more about the law prior to that act. So which is it?

              You really are not paying attention to the whole “Congress reacts to an overreaching anti-patent Court” thing, are you?

              You’re just another cl 0wn who drank waaaay too much patent kool aid” – lovely AOOTWMD – place “anti-” appropriately in that sentence, and look in the mirror my friend.

        3. tell us exactly how you propose to deal with claiming [old eligible subject matter]+[new ineligible subject matter].

          B-b-b-b-but Diehr is gobbledlygook (says Malcolm in his tired and trite mantra….)

          1. The p s c y choti c t w i t apparently is incpable of backing up his b.s., or answering simple questions about his biz arre belief system.

            But we all knew that already.

            1. is incpable of backing up his b.s., or answering simple questions

              LOL – massive AOOTWMD FAIL.

              Yes, certain things are already known – just not the things Malcolm is trying to spin.

    2. Software patents? If they look like a business method patent or like anything that looks like anything in Alice or Bilski, not valid. Otherwise, who knows?

      Here’s a great guess: if the only new elements in the invention are elements of receiving, “determining” and/or transmitting “new” data (or combinations of such0, then the mere recitation of “on a computer” or other old conventional connectivies/elements isn’t going to save you. For example, we all know that computing devices can transmit and receive information from other computing devices and from humans. A claim to a method of “using a computer” to cause ["new" data] to be “automatically” transmitted or received at a programmed or “determined” time is very likely worthless jnk in view of Alice (plus common sense).

      The next substantial chink in the softie wofties eggshell armor that is going to go up in flames is the b.s. term “configured to” as a proxy for physical structure when it appears in the context of a “new” information processing machine or a method which relies on same. That mythology is supported in large part by the good ol’ Randy Rader’s completely concocted huffery in In re Lowry. We’ve seen the softie woftie patent crowd performing backflips here for years trying to pretend that Rader knew what he was talking about (although he certainly did know what he was doing when he spouted his nonsense– we need no longer wonder about that!). They’ll be proven wrong again and once again we’ll have to read a weirdo whining post like the one David just floated here.

      1. when it appears in the context of a “new”

        LOL – a brave and empty gesture. A machine is considered abstract. No matter how that machine is considered, so of course, the sane and reasonable “configured to” won’t save the machine.

        Try to keep up Malcolm – even with a “win” like Alice you are falling behind.

        1. A machine is considered abstract. No matter how that machine is considered, so of course, the sane and reasonable “configured to” won’t save the machine.

          Let everyone know when you return to planet Earth from whatever drug trip you seem to be on.

        2. even with a “win” like Alice you are falling behind.

          Keep telling yourself that. After all, the softie woftie patent folks are The Most Important People Ever, as they constantly remind us. Everything you guys do is magical and without you we’d all be living in “the iron age” … or at least we’d never be able to perform amazing sooper dooper technical feats like “using a computer” to generate a list of movies we want to watch or “automatically” “telling” “a friend” that we ate a Joe’s Diner last night.

          Growing up is really hard for you guys. But you still have a lot of growing up to do, unfortunately.

      2. Alright MM so hows about a processor in an industrial machine controlling the industrial machine to perform industrial process abc via “instructions” therefore? Let’s say it’s a B claim format machine claim.

        The only novelty is in the industrial process for this machine claim that has incorporated those process limitations into their machine claim via B claim format.

    3. The easy part is this. Business method patents are dead, dead, dead.
      Perhaps you didn’t count the number of justices signing onto the concurrence — which would ban all business method patents. That number was 3 — as in less than 5.

  12. It’s amazing how much verbiage is spilled about “software patents” when the patents causing the problems and getting shot down are almost all patents in which there IS NO ACTUAL software in the patent! Merely broadly claimed business ideas and directions to “do it on any general purpose computer” or reciting a few conventional computer elements like a “memory” and a “processor.”
    Save the histrionics for a court trying to invalidate a patent which actually does disclose and claim novel and unobvious software that accomplishes something useful.

    1. Doormouse, totally agree.

      The hue and cry here is raised, may I suggest, because the proponent of the rancorous reception of Alice really do want to patent business methods, both as “inventors,” as patent attorneys and best of all, as “trolls.”

      I was aghast that IBM seems to be patenting the same sort of “junk.” I thought that company actually was technology based, so that most everything they patented would be eligible. That they too are fighting to patent these kind of claims tells one something.

  13. My guess is Alice is going to cause us all to bang our heads, stub our toes, and wander through Wonderland for many years to come.

    Not sure who “all of us” is but, yes, many the same wealthy, self-interested people who have been “banging their heads” for years, since KSR at least, will continue to bang their heads whenever their patent entitlements are shrunk down in any manner. And they will continue to be wrong about just about everything, and they will continue to demonstrate why they deserve to be shut out of the system.

    More importantly, David, as you’ve been told repeatedly for many years, the wind is blowing in one direction when it comes to computer-implemented jnk and for very good reasons. There is still more rationality to be injected into the patent system and so, naturally, computer-implemented jnk is going to suffer. What effect will this have on progress in the computer arts? Absolutely none.

    Kappos, in contrast,

    This guy was a big part of the problem and was largely incapable of understanding the basics. Now he’s back to his life as a multi-millionaire lawyer who stands to directly benefit from inflation of the patent bubble. Why should anyone care what he thinks unless they only care about what Kappos cares about (i.e., grifting off the broken system)?

      1. Just go ahead and call people who disagree with you “communists”.

        We all know what you’re trying to say.

        You’re a complete i d i 0t.

        1. LOL – the king of ad hominem and his typical AOOTWMD replies.

          Um, you do know why the Jane references fit, right? (and it has nothing to do with the person supplying the reference).

          Keep up man.

              1. LOL – have a point?

                Yes, I do have a point. You’re a l y ing idi 0t and a s0 ci0 path.

                There’s not a whole lot of debate about that.

                Let’s let David come to your rescue and praise your virtues. That will be most amusing. We can all talk about y0ur wonderful idea to use mailroom staff to screen and discard registered mail sent to attorneys so those attorneys can avoid learning about relevant prior art, and the good old days when you used to have conversations with your own sockpuppets here.

              2. My guess is that Greggy Weggy is you latest sockpuppet addition – not bad for the guy who claimed he does not use sockpuppets and whine incessantly when others did.

                Duplicity, thy name is Malcolm.

  14. link to blogs.technet.com

    Above is a similar view as Kappos. They are basically right in that the 3 that wanted Stevens dissent in Bilski to rise to the majority opinion were –thankfully–only 3. Kagan didn’t join the 3. So, in some sense, the Stevens view of the world (which is from about 1400) lost ground.

    But, this count your blessings view of the opinion doesn’t take into account how any judge that can contrive an abstract principle for your claims can invalidate your claims absent any factual evidence and absent any reference to the 1952 Patent Act. That is simply not judges applying the law, but making it up on their own.

    Nor does it take into account that Obama has loaded the court with judges ignorant of patent law and ignorant of science. And Obama has loaded the PTO with anti-patent leaders in CJ Smith and the new shadow director Lee.

    But, again, we should remember that big corp eviscerated the Sherman Ant Trust Act with the SCOTUS and not Congress. That big corp has gotten pretty much everything they have wanted in the last 50 years and now they want to burn down the patent system. It is tribute to the great accomplishments of the patent system that there are people that are willing to defend the patent system without being paid their salary to do so. But, remember there are hordes of people that are being paid to burn it down.

    The proper way to think about this decision is that it ate away again at patent eligibility. That is how these wars are lost. Battle by battle. The losses in this battle are not as large as they could have been, but there are losses. For example, now we have this ordinary application of a computer that apparently includes anything that the judges imagine that a computer could do. The Stevens view that a computer can do anything and you just write down what you want and order your boy to get it done. That is one big loss.

    That is the proper perspective for this opinion. The war is still on. The battle was lost, but it wasn’t a complete disaster. Some divisions weren’t wiped out. And, the propaganda machine on our side is working hard to re-characterize the loss as a win.

    1. And the collateral damage of losing Rader is perhaps the greatest loss. Obama will no doubt appoint another person ignorant of science, patent law, and innovation.

          1. I am. He is one of the biggest reasons I got into patent law. He was moral and ethical and expressed in very clear terms the great power of patents to encourage innovation. I feel like he left the field of battle.

            1. He did, but he went off the field to go train more troopers. He will, again, be one of the biggest reasons those troopers get into patent law. Just as he was for you.

              1. 6,

                I think that you are not fully aware of the impact of your comment “train more troopers” vis a vis the training that is undertaken today.

              2. Well right now the “impact” of my comment was to have you say something back

                sound like an admission of tr011ing.

                (we are not shocked, by the way)

              3. “sound like an admission of tr011ing.”

                Nah brosef I was just pointing out a fact. If you have some other “impact” in mind you may tell us all about what it is.

              4. “Your intent to tr011 is the fact under discussion 6.”

                I thought the “fact” under discussion was the impact of my comment. But if you insist on discussing only your batsht insane theories then fine I’m through talking.

        1. At a personal level, I am much more disappointed with Sotomayor. I was sure that she would have grown independent of the Stevens taint. While Stevens was Sotomayor’s mentor when she joined the Court, the mentorship was a relatively short one.

          That she stuck with Breyer and Ginsburg in the abject disregard for what Congress explicitly said about business methods (the reason Stevens lost his majority position in Bilski), shows a lack of judging the merits and a predisposition of a fixed agenda. My personal conversations with her would have indicated her actions to be otherwise than what she penned.

    2. I think it funny that you still think of eligibility of software as some sort of “war”. I mean, seriously old timer. The patent system is an entitlement program and whether or not the gov decides to give out entitlements for software is just one more political decision. And it is a smaller one than 1000’s of others. The issue certainly is not some sort of huge war.

      1. I think it funny that you still think of eligibility of software as some sort of ‘war’.

        That is not humor, but naivete. March lemming, march.

        Entitlement…. (sigh) another who refuses to recognize Quid Pro Quo.

      2. I think it funny that you still think of eligibility of software as some sort of “war”.

        We all know that a lot of the other patent txxbxggers are barely-closeted wingnuts with generalized anti-government grievances. This is how they talk about every change that they don’t like. Endlessly bringing up “great wars”, comparing the PTO to N a zis, and imagining that they represent some final bulwark against communism is a routine part of their vain effort to be taken “very seriously.” In reality, it’s just another embodiment of the usual crotch grabbing you can find all over the Internet when talentless basement dwellers take to the comment boards.

    3. NWPA,

      An error repeated does not correct that error.

      Can you tell me where in 35 USC 101 (or 35 USC 100 for that matter), “technological” is tied to patent eligibility?

      Do you see it? How deep the rabbit hole of “implicit?”

      Here, let me make it easy:

      35 USC 100:
      When used in this title unless the context otherwise indicates—
      (a) The term “invention” means invention or discovery.
      (b) The term “process” means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.
      (c) The terms “United States” and “this country” mean the United States of America, its territories and possessions.
      (d) The word “patentee” includes not only the patentee to whom the patent was issued but also the successors in title to the patentee.
      (e) The term “third-party requester” means a person requesting ex parte reexamination under section 302 who is not the patent owner.
      (f) The term “inventor” means the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.
      (g) The terms “joint inventor” and “coinventor” mean any 1 of the individuals who invented or discovered the subject matter of a joint invention.
      (h) The term “joint research agreement” means a written contract, grant, or cooperative agreement entered into by 2 or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention.
      (i)
      (1) The term “effective filing date” for a claimed invention in a patent or application for patent means—
      (A) if subparagraph (B) does not apply, the actual filing date of the patent or the application for the patent containing a claim to the invention; or
      (B) the filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority under section 119, 365 (a), or 365 (b) or to the benefit of an earlier filing date under section 120, 121, or 365 (c).
      (2) The effective filing date for a claimed invention in an application for reissue or reissued patent shall be determined by deeming the claim to the invention to have been contained in the patent for which reissue was sought.
      (j) The term “claimed invention” means the subject matter defined by a claim in a patent or an application for a patent.

      35 USC 101:

      Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

      1. And has anyone supplied a non-circular definition of “technological” yet?

        Anyone?

        Bueller?

        As to “technology”, maybe we need a glossary, of maybe the Supreme Court will find the wiki version to be too broad, er, um, “abstract” and thus turn even “technology” into the forbidden “abstract”

        From the wiki: Technology (from Greek τέχνη, techne, “art, skill, cunning of hand”; and -λογία, -logia[1]) is the making, modification, usage, and knowledge of tools, machines, techniques, crafts, systems, and methods of organization, in order to solve a problem, improve a pre-existing solution to a problem, achieve a goal, handle an applied input/output relation or perform a specific function.

        How deep the rabbit-hole?

        1. Sayeth the Royal Nine in their best Humpty Dumpty tones: technology means what we say it means (and we are not going to tell you what we mean).

            1. the law still says otherwise

              If you say so.

              Please keep telling your imaginary clients that they don’t need to worry about reciting novel structure when they claim their “new” machines or compositions.

              Market forces will take care of the rest.

              1. (yawn) – feel ready to stop dissembling yet Malcolm? Lynchpins like “adjusted to” and other case law examples to disprove your “lynchpin” mandate await.

          1. Further, neither Prometheus nor Alice would have been saved by your vap1d “novel structure” mantra.

            Where on earth are you coming up with this nonsense?

        2. Anyone want to give it a shot:

          Can anyone tell me where in 35 USC 101 (or 35 USC 100 for that matter), “technological” is tied to patent eligibility?

          Anyone?

          Bueller?

          Bueller?

          Bueller?

          1. anon, the Euro’s like to say “technology.” Came out of Germany according to MaxDrei.

            IBM’s brief in Bilski advocated that 101 be construed to be limited to “technology,” and of course, IBM defined “software” to be such.

            But, the statute says, “machines, manufactures and compositions.”

            That is all we have to ask — is the patented subject matter one of these. But we have to add this nuance, do we not? The statute also says “new” or “improved.” Thus a old machine is not even eligible subject matter. Neither is adding the ineligible to the eligible. The case law, prior to Rich, was replete with cases that held that adding the ineligible such as printed matter or a business method, to the eligible was non statutory. Now, with Promethues and Alice, interpreting Benson, the Supreme Court is on board with this very simple notion as well.

            At some point anon, you are going to have to face reality, and accept that your side not only has lost a battle, but it has lost the war.

            1. Ned,

              Whatever the Euro’s “like to say” is meaningless when you are talking US law.

              Try again.

              And (once again) you missed one of the four statutory categories (never mind the fact that software already is in one of those categories: Manufacture)

              As to the rest, as long as you rely on your bogus and twisted reasoning, no battle, nor law has been “lost.”

      2. Your comment anon does point to one aspect of the opinion that hasn’t really been discussed. The safe harbor here is improving hardware just like in Europe. I think under this opinion that the EPO test is a safe harbor under Alice.

      3. Yes anon I do see it and did see it when I read the opinion the first time. There is language in there pushing it to the EPO standard.

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