Does PTAB have 101 Authority in CBMs?

Ha!  And you all think I’m crazy. It was raised in a recent case, Benefit Funding Systems v. Advance America Cash, (oral argument here) and is on the way in another.  Stay tuned.

About David

Professor of Law, Mercer University School of Law. Formerly Of Counsel, Taylor English Duma, LLP and in 2012-13, judicial clerk to Chief Judge Rader.

53 thoughts on “Does PTAB have 101 Authority in CBMs?

  1. 5

    Oh no, Ned: “printed matter is non statutory”
    Assuming arguendo that it is, you “cannot dissect a claim, excise the printed matter from it, and declare the remaining portion of the mutilated claim to be unpatentable. The claim must be read as a whole.” In re Gulack.

    Case closed.

    BTW … I suggest you focus on the more recent cases.

    ” In doing so, we do not interpret the board as holding that the printed matter can be ignored because it, by itself, is non-statutory subject matter. The board cited no authority in analyzing the relevance of the lack of a functional relationship, or of the status of the printed matter as non-statutory subject matter, to its decision not to accord the printed matter patentable weight. ”

    Now read that authority:

    In re Russell, 48 F.2d 668 (C.C.P.A. 1931).
    “The mere arrangement of printed matter on a sheet or sheets of paper, in book form or otherwise, does not constitute “any new and useful art, machine, manufacture, or composition of matter,” or “any new and useful improvements thereof,” and then read the cases cited, including Guthrie that go back to Hotel Security. All of them excluded the non statutory subject matter from the novelty analysis.

    Also, every single Supreme Court case in the last 60 years had the same analysis.

    Mayer would call it threshold analysis. But, the result is the same. Non statutory subject matter is excluded before 103 is applied.

    1. 5.1

      Simple Set Theory explanations Ned – you continue to ignore the points placed before you.

      Set B printed matter is just not the same as Set C printed matter.

    2. 5.2

      You also need to read In re Jones and In re Bernhart.

      Nor are the “printed matter” cases, cited by the board, supra, controlling as to these apparatus claims either on the facts or in principle. On their facts, those cases dealt with claims defining as the invention certain novel arrangements of printed lines or characters, useful and intelligible only to the human mind. Here the invention as defined by the claims requires that the information be processed not by the mind but by a machine, the computer, and that the drawing be done not by a draftsman but by a plotting machine. Those “printed matter” cases therefore have no factual relevance here.

      Again Ned — try to stick with more recent case law.

          1. 5.2.1.1.1

            Printed matter is non statutory because of mental steps?

            Wow, what a strawman.

            Software to calculate the amount of grace one receives in exchange for 5 hail Mary’s is clearly functional with respect to the computer. But that is not the only problem with the claim.

            Have you ever read Hotel Security?

            1. 5.2.1.1.1.2

              Printed matter is non statutory because of mental steps?
              Mental steps? Who mentioned mental steps?

              Wow, what a strawman.
              Take it up with the CCPA. They are the ones that generated the language. Also, you may want to look at the statement reproduced immediately below for a good example.

              Software to calculate the amount of grace one receives in exchange for 5 hail Mary’s is clearly functional with respect to the computer. But that is not the only problem with the claim.
              I see you are one of MM’s acolytes … concoct some crazy, meaningless invention in order to prove some unstated point.

              Have you ever read Hotel Security?
              A 2nd Circuit case from 1908? You are really reaching if you think that this trumps the CCPA and Federal Circuit cases that I have cited. BTW — I have read the case. It is a painful read as the notion of concise statements of law and fact appear to have eluded writers of that time. I’ve sat next to drunks at a bar who can present clearer arguments than the court in this opinion.

              1. 5.2.1.1.1.2.1

                OH No, the problem with the Federal Circuit is an has always been their resistance to determining whether the novel subject matter and the claim a statutory. It makes no difference if software generally is functional with respect to computer if the novelty in the software has nothing to do with improving machines, manufactures and compositions. It is almost as if they did not read and did not understand, or if they did understand, refuse to follow controlling precedent. Perhaps is the failure of the solicitor and not citing the proper cases.

                However, In re Russell is a CCPA case and therefore is en banc and therefore is controlling until overturned by a subsequent en banc Federal Circuit case. In re Russell adopts the analysis of Hotel Security – that if the novel subject matter in the claim is nonstatutory – in the case specifically references the statutory categories, the claim as a whole is not patentable.

              2. 5.2.1.1.1.2.2

                OH No, the problem with the Federal Circuit is an has always been their resistance to determining whether the novel subject matter and the claim a statutory. It makes no difference if software gen erally is functional with respect to computer if the novelty in the software has nothing to do with improving machines, manufactures and compositions. It is almost as if they did not read and did not understand, or if they did understand, refuse to follow controlling precedent. Perhaps is the failure of the solicitor and not citing the proper cases.

                However, In re Russell is a CCPA case and therefore is en banc and therefore is controlling until overturned by a subsequent en banc Federal Circuit case. In re Russell adopts the analysis of Hotel Security – that if the novel subject matter in the claim is nonstatutory – in the case specifically references the statutory categories, the claim as a whole is not patentable.

              3. 5.2.1.1.1.2.4

                In re Russell is a CCPA case and therefore is en banc and therefore is controlling until overturned by a subsequent en banc Federal Circuit case.
                Since you apparently need a little hand holding, let me walk you through this slowly.

                In re Russell was decided in 1931 and addressed a directory (i.e., a document written on paper) with an alleged novel arrangement of surnames (i.e., arranged phonetically).

                In re Bernhart was decided in 1969 and addressed a rejection under 35 USC 101 of claims (both method/apparatus) involving a computer based upon “printed matter.”

                Of course, you know In re Lowry.

                Tell me again which case is controlling? Explain to me why a Federal Circuit judge, looking at the facts of Russell, would believe that Russell is controlling with regard to computer-implemented inventions?

                In re Russell adopts the analysis of Hotel Security
                Except that it doesn’t mention Hotel Security.

                Regardless, all your foot stomping, hand wringing, and yelling isn’t going to revive dead case law. The fact that you keep raising these cases reflects the weakness of your arguments. On the other hand, the fact that I can cite cases that were authored while we were all alive reflects the strength of my arguments.

              4. 5.2.1.1.1.2.5

                Let’s not be obtuse.

                Russell cites Guthrie who’s holding rests on Hotel Security’s dicta.

                The principle of these cases is that if the novel subject matter of the claim is nonstatutory, the claim as a whole is not patentable. The principle had nothing to do with why printed matter was nonstatutory. It was the mode of analysis that was important.

                Software and computers are notoriously old. The stored- program computer was invented in the ’40s. When one is analyzing a claim that involves a stored program computer one does not simply say that a stored program computer involves statutory subject matter and then stop, one has to look further to find what in the claim is novel. Often that involves simply, and no more, then mathematics. We know from Benson and Flook, that if that is the case, the claim as a whole is not patentable.

              5. 5.2.1.1.1.2.6

                Ned,

                I have shown you directly and exactly where Guthrie fails.

                Further, you are embracing the “House/Morse” fallacy again.

                You are not living up to your end of the deal.

              6. 5.2.1.1.1.2.7

                Software and computers are notoriously old. The stored- program computer was invented in the ’40s. When one is analyzing a claim that involves a stored program computer one does not simply say that a stored program computer involves statutory subject matter and then stop, one has to look further to find what in the claim is novel. Often that involves simply, and no more, then mathematics. We know from Benson and Flook, that if that is the case, the claim as a whole is not patentable.
                We have multiple CCPA/Fed Cir cases that state that the printed matter doctrine doesn’t apply to computers. The cases you cite are nearly (if not already) a century old and don’t deal with computers. If you think you’ve got a winning argument, keep living in the fantasy land where you currently reside.

                Your case law is kaput. Once you realize that, you’ll be in a position to give your clients better counsel.

                Let me rephrase this one last time, we’ve got a 1994 Federal Circuit case in In re Lowry that is directly on point. You hold up a 1908 cases from the 2nd Circuit that isn’t on point. What case is the average federal judge or APJ going to rely upon? Let me give you a hint, my search of the USPTO appeal decisions yielded not a single instance in which Hotel Security was cited.

                Take your time and think this through …

              7. 5.2.1.1.1.2.8

                This is just a repeated pattern of Ned to glom onto some outdated piece of law that sounds in his desired Ned-IMHO-Law and to carpet bomb that version regardless of what anyone has to say on the matter – relentlessly, ad nauseum, without regard, without any notion of care or reasonableness.

                The deal Ned and I struck requires different behavior from Ned (“unless you too are willing to change and address my longer posts when I provide counterpoints.). He has failed spectacularly in this regard.

    3. 5.3

      Oh No, with all due respect, the mode analysis of a claim involving nonstatutory subject matter provided Hotel Security, Guthrie v. Curlett and In re Russell has hardly been laid to rest by Fed. Cir. panel decisions that simply chose to ignore the mode of analysis in favor of nominalism, a doctrine that never was consistent with Supreme Court authority and which has been ash-canned time an again by the Supreme Court.

      Moreover, Alice has held that this mode of analysis is the law.

      I find it almost bizzare that you still cite Federal Circuit 101 cases for anything. They have been consistently wrong and have been consistently overruled.

      If the novel subject matter is non statutory, it must be integrated per Diehr, otherwise the claim as a whole is unpatentable.

      What does this mean? For 102 analysis, the nonstatutory subject matter must be given no weight. One does not move on to 103 to determine whether the nonstatory subject matter is obvious. That, sir, is ridiculous. If the Federal Circuit ever sanctioned such a mode of analysis, that case law is implicitly overruled by Alice.

      1. 5.3.1

        You are making up some real bizarre Ned-IMHO-Law there Ned….
        progressing from 102 to 103 like that….?

      2. 5.3.2

        Alice has held that this mode of analysis is the law.
        Alice is about 101. We are talking about 102/103. Did you forget?

        For 102 analysis, the nonstatutory subject matter must be given no weight.
        Good luck with that loser argument.

        If the novel subject matter is non statutory, it must be integrated per Diehr, otherwise the claim as a whole is unpatentable.
        What did they say in Diehr …. hmmmm … “Respondents’ claims must be considered as a whole, it being inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis.”

        What else does Diehr say …. hmmm … “The question therefore of whether a particular invention is novel is ‘wholly apart from whether the invention falls into a category of statutory subject matter.'”

        That, sir, is ridiculous.
        My legal writing professor would have failed you right there. What are you referring to when you say “[t]hat”?

  2. 4

    David, what if I prove that everything in the claim that is statutory subject matter is old or obvious?

    1. 4.1

      Example,

      The claim in Bilski plus a generic computer.

      In the CBM, I prove that a generic computer is old, and I argue that the balance of the steps are non statutory and must be ignored. Do I win under 102/103?

      1. 4.1.1

        I argue that the balance of the steps are non statutory and must be ignored. Do I win under 102/103?
        You lose … see In re Lowry.

        But seriously Ned, did you believe it be any other way?

        1. 4.1.1.1

          Oh No, good case. Let me see. What did Rader say here?

          “Contrary to the PTO’s assertion, Lowry does not claim merely the information content of a memory. Lowry’s data structures, while including data resident in a database, depend only functionally on information content. While the information content affects the exact sequence of bits stored in accordance with Lowry’s data structures, the claims require specific electronic structural elements which impart a physical organization on the information stored in memory. Lowry’s invention manages information. As Lowry notes, the data structures provide increased computing efficiency.”

          The claimed invention does not depend upon the content of the information, but it defines new physical structure of the media.

          (I don’t know if this is true really, be it is the point of the holding.)

          As such, the claim is to a new, physical manufacture.

          Back to Bilski. How does adding the computer to the claim change anything? One can find the computer old and the rest of the claim non statutory per Bilski.

            1. 4.1.1.1.1.1

              David, with all due respect, David, you have a very strange idea as to what is non statutory. Clearly, any new subject matter that is or improves a machine, manufacture, or composition, or transforms one of these per the MOT, is statutory.

              The only subject matter that runs afoul is where the novel subject matter is non statutory.

              Tell me, have you ever even read Hotel Security and the line of cases that lead to the printed matter doctrine, In re Russell? That line of case held claims unpatentable if the eligible subject matter was old and the only thing new was non statutory. If that doctrine is no longer valid, then printed matter doctrine is not valid because that is the doctrine.

              1. 4.1.1.1.1.1.1

                Ariosa v. Sequenom may test that proposition. Patentee discovers a “product of nature.” Revolutionizes industry and improves everyone’s health. But, if you “subtract” the product, you end up with a series of steps that are “old.”

                From what I understand of your views on 101, and this statement, no patent under 101, regardless of 103?

              2. 4.1.1.1.1.1.2

                The new use of an old product is patentable as a process by statute.

                An old product is non statutory, and Frederico, citing cases, stated that the ’52 Act was not intended to overturn this fundamental proposition.

              3. 4.1.1.1.1.1.3

                Ned,

                This goes to the heart of the exceptions to the judicial doctrine of printed matter.

                That you have consistently refused to honestly discuss this with me, from the standpoint of my laying out the judicial doctrine in easy to understand set theory and the stepping back of coverage of that judicial doctrine for those items that have the characteristic of functional relationship only shows the level of dishonesty (sorry if that offends, but it is the most accurate word) in your trying to maintain a philosophical position that supports your well-known third party interests.

                You again mistake MoT as a panacea, neglecting what our Court has done with MoT:

                Bilski: MoT not required
                Prometheus (and now Alice): MoT not sufficient.

                Remember Ned, the meeting of the statutory category aspect of 101 was stipulated by both parties and was thus NOT at issue in that case, and thus is OUTSIDE of the HOLDING of that case (otherwise, you violate the case or controversy aspect of what a Court may render and you have the Court writing law in an advisory condition position).

                Further, your continued dependence on Hotel Security is most odd, given that the language in that case is exactly the type of language captured in the 1952 Act. You continue to parse case law and only take out that which aligns with your agenda and you continue to ignore parts of cases that show that such alignment is false. I do not understand why you think your position is compelling as it is plain to see for anyone with any legal training how your position must fail when the entire case is reviewed.

                Please visit again my simple set theory explanation and (if you can) explain what legal weakness you see in the difference between Set B printed matter and Set C printed matter – you have NEVER partaken in such a discussion, and it might help you if you can provide a cogent and intellectually honest counterpoint to the point that I have presented.

              4. 4.1.1.1.1.1.4

                Ned,

                Another point (that you refuse to address) is the inherency argument related to ‘oldbox.’

                You refuse to acknowledge the fact that some “use” actually is more than mere “use” and creates a fundamental (and real) physical change – thus creating a new box.

                This position is captured in the shorthand terms of “Morse/House” fallacy. The House fallacy is that any ‘oldbox” is enough to capture ALL improvements to the machine that arise out of the path of the manufacture known as software. This runs headlong into the Morse case, which precludes this type of argument as such an argument would give legal right to that very first creator of ‘oldbox’ inventive improvements to ‘oldbox’ that were not inherently IN ‘oldbox.’

                The inherency test is key.

                This inhrency test has also been captured in discussions on this blog that you refuse to partake in. Those discussion were first captured in the Grand Hall experiment, and then later replicated in actual casaelaw in the Nazomi case.

                Tell me Ned, are you still struggling personally with the Nazomi case, trying desperately to find some “hardware” out in a “software” “Point of Novelty” case?

                Ned, to any intellectually honest person, each point that I have so often provided leads down one unavoidable path.

                Eventually, if you are to be honest, you are going to have to walk this path and address this points presented without your parsing gamesmanship.

                I eagerly await that day.

              5. 4.1.1.1.1.1.5

                anon, the court never said that novel subject matter that causes the claim as a whole to pass the MOT was non statutory.

                The court has also clarified that just because the old parts of a process passes the MOT does not mean the claim is eligible.

                The best single clue to patentability of a process remains the MOT. No claim where the novel subject matter has effected a new or improved transformation in a machine, manufacture or composition has ever been held unpatentable. The converse is also true.

                Get it through you very thick skull that its the MOT. But it must be not be applied in the utterly inane way Rader applied in Prometheus, applying it to old but statutory processes and things so as to make a mockery of the law. (Man was that Judge a piece of work, as is any members of the Federal Circuit who still insist on nominalism and who reject the principles of Prometheus and Hotel Security.)

              6. 4.1.1.1.1.1.6

                The best single clue to patentability of a process remains the MOT.

                Non sequitur – and the fact that you continue to express on OVER -reliance on MoT is the heart of your problem.

                Pleas try to present a cogent legal theory that does NOT depend so critically on a mere clue.

                A clue is not a requirement – you need a legal theory that does not so attempt to make MoT a requirement. Until you can so do this, your view is but a fallacy.

              7. 4.1.1.1.1.1.7

                If that doctrine is no longer valid, then printed matter doctrine is not valid because that is the doctrine.
                Ned … try to read (and apply) the current case law. You might find that when you do, you’ll be able to give your clients better advice.

              8. 4.1.1.1.1.1.9

                This goes to the heart of the exceptions to the judicial doctrine of printed matter.
                Anon — I hate to keep correcting you here, but the terminology matters. The printed matter doctrine is a judicial exception. As a judicial exception, it is to be construed narrowly.

                As we both know, the Federal Circuit stated the following within In re Lowry: “[d]espite this cautioning, the Board erroneously extended a printed matter rejection under sections 102 and 103 to a new field in this case, which involves information stored in a memory.” Therefore, the Ned’s precious printed matter doctrine has been expressly limited.

              9. 4.1.1.1.1.1.10

                The best single clue to patentability of a process remains the MOT.
                If so, how come the claims in CLS Bank were deemed nonstatutory. We were talking about a process tied to a machine, the operation of which was an improvement to the machine.

                Frankly, as far as my clients are concerned, I’m all for the MOT test as all of my client’s inventions can easily fit within that test. However, when a process is clearly tied to a machine (as in CLS Bank) and the Federal Circuit ignores it, then I think the MOT test is functionally dead.

              10. 4.1.1.1.1.1.11

                Don’t sweat it Oh no – I recognize that I am restating the phrase from how it is typically stated.

                But I do this to achieve the very thing that you stress: “The printed matter doctrine is a judicial exception

                Somehow, in Ned’s twisted pursuit of his agenda, he has come to the view that Congress has explicitly stated that printed matter is not an eligible subject matter in any initial analysis.

                Of course, he refuses to provide a legitimate citation for this, instead obscuring and conflating judicial views on the matter, and never ever providing Congressional support.

                He does this expressly because software as printed matter fits the exception to the judicial doctrine and thus software as printed matter carries patentable weight and qualifies as a manufacture under the patent laws.

                When so views as a manufacture in its own right, this thus weakens the anti-software patent view of what is also claimed as a changed machine when ‘oldbox’ is changed with the addition and configuration of ‘oldbox’ into an improved machine when ‘oldbox’ is changed in the addition and (necessary) re-configuration that occurs when software as a machine component is added to ‘oldbox.’

                We are very much on the same side here Oh no.

              11. 4.1.1.1.1.1.12

                Oh no, printed matter is non statutory.

                See, In re Russell.

                Non statutory subject matter is NOT, repeat, NOT a judicial exception.

              12. 4.1.1.1.1.1.13

                Oh No, the problem that we all have is a Federal Circuit that has strayed far afield because it has refused to follow well established law in so many, many areas. The Supreme Court has had to intervene time and again to restore order to an out of control court.

              13. 4.1.1.1.1.1.14

                OH No, regarding link to patentlyo.com,

                If the claims in Alice recited an improved computer or computer system, the case would have come out differently. The solicitor was clear on this point as well.

                The computer elements in Alice were old and generic — functionally recited. No new machines were involved in the case.

              14. 4.1.1.1.1.1.15

                If the claims in Alice recited an improved computer or computer system, the case would have come out differently. The solicitor was clear on this point as well.

                Completely wrong Ned – we covered this ground running up to the Supreme Court decision and I clearly pointed out – and you agreed – both before and after the decision that both sides stipulated to the statutory category aspect of 101 having been met.

                Your reversal at this point is purely unethical.

              15. 4.1.1.1.1.1.16

                Oh no, printed matter is non statutory
                Assuming arguendo that it is, you “cannot dissect a claim, excise the printed matter from it, and declare the remaining portion of the mutilated claim to be unpatentable. The claim must be read as a whole.” In re Gulack.

                Case closed.

                BTW … I suggest you focus on the more recent cases.

                If the claims in Alice recited an improved computer or computer system, the case would have come out differently. The solicitor was clear on this point as well.
                You have a different view as to what constitutes an “improved computer” than I. Take (i) your average server and (ii) your average server loaded with $50,000 worth of software and take it to one skilled in the art. Ask them whether (ii) is improved over (i). I would say that 99.9% of the time, they would say yes … (ii) is an improvement over (i).

                A computer without software is little more than a paperweight. Software improves the computer … it is an integral component of a computer. While software within a computer is much easier to change, then say a memory card, many components of a computer are replaceable.

              16. 4.1.1.1.1.1.17

                Oh no,

                You have hit upon the essence of the Grand Hall experiment and the actual lessen from case law of Nazomi, which Ned Heller has – to this day – professed a personal lack of understanding (or at the least, has NOT professed that he understands the case).

                Typically, it is at this point that Ned will entirely leave the conversation, only to return a future thread still proclaiming everything on his agenda, with no accord for the items that you have presented to him.

            2. 4.1.1.1.1.2

              David,

              So true.

              All “Gist/Abstract” is is the old military maxim of divide and conquer.

              The Court is upset that its addiction to fingers in the 101 nose of wax was explicitly curtailed with the 1952 Act. It is no mistake that they have pinned what are obvious 103 and even 112 positions in 101 rather than the appropriate sections of law. All we are seeing is the Court refusing to give up the power of setting common law as to what “invention” means in the first place. That they hide behind some notion of “constitutionality” is reprehensible. They do so with a purely conjectural (as it would be impossible to foresee into the future the very harm they postulate) “too-broad-will-impede” stance. Such is simply B$. ANY patent that can survive the other aspects of patent law (102/103/112) and maintain its breadth of claim has EARNED its limited time Quid Pro Quo no matter how broad that limited time power may be. If a commonly known and documented action preceded the grant of the patent, then the patent cannot survive and the fear can be seen for the T001 that such fear is: mongering of the FUD scare the children bedtime story.

              Such has no legitimate place in our real life laws.

              It is time to take a Churchill stance to the Chamberlain moves of the Court.

          1. 4.1.1.1.2

            You seem to forget this language: The Patent and Trademark Office (PTO) must consider all claim limitations when determining patentability of an invention over the prior art.

            What is it about “all” that you have a problem comprehending? You also realize that 35 USC 103 reads “claimed invention as a whole.” What is it about “whole” that you don’t get? You don’t get to ignore limitations in a 102/103 analysis. There is only one judicial exception — the printer matter doctrine.

            Back to Bilski. How does adding the computer to the claim change anything?
            Per CLS Bank, it changes nothing. However, we were talking 102/103 (i.e., the scope of CBM) and not 101 (i.e., CLS Bank and Bilski). I truly hope that your lawyering skills are better than this. A first year associate (in family law) could tear apart your analysis.

            1. 4.1.1.1.2.1

              It is more than telling too that Ned relies on a bastardization of understanding what is entailed of the judicial doctrine of printed matter, and how he insists on ignoring the very real difference between Set C printed matter and Set B printed matter in his attempt to advance his agenda.

            2. 4.1.1.1.2.2

              OH No, the proposition concerning “all claim limitations” is correct to the extent it applies to statutory subject matter.

              Next consider the cases where non statutory subject matter is claimed with statutory subject matter. In not a single case has the non statutory subject matter been given weight unless it is functional with respect to the statutory such that it transforms it into something new or improved.

              Funk Bros. the ineligible was ignored when determining the patentability of the eligible.

              Benson, the addition of a old computer to the ineligible math changed nothing.

              Flook, measuring an eligible process to gather data for an ineligible mathematical process was not enough.

              Diehr, the ineligible was functional with respect to the eligible so that the eligible process was improved.

              Bilski, the eligible parts were all old and conventional.

              Prometheus, the eligible parts were all old and conventional.

              Myriad, the eligible parts were old.

              Alice, the eligible parts were old.

              In no case was the non statutory given weight unless, as in Diehr, that subject matter was functional in a way to improve the eligible.

              Read the printed matter case, In re Russell. Relying on authority stemming back to Hotel security, the court determined the new subject matter, the printing, to be non statutory and the eligible subject matter old.

              There are no exceptions, Oh No. The case are all uniform with mixed statutory and non statutory. The eligible subject matter must be new or improved, and the ineligible must, if it is the PON, be functional to cause the statutory parts to be new or improved.

              1. 4.1.1.1.2.2.2

                In not a single case has the non statutory subject matter been given weight unless it is functional with respect to the statutory such that it transforms it into something new or improved.
                Read In re Gulack.

                Sorry Charlie.

                Read the printed matter case, In re Russell.
                Read the CURRENT case law on printed matter. Frankly, I’m not interested in what a 1931 CCPA cases says about printed matter.

                BTW — do I still have to remind you what In re Lowry said about the inapplicability of the printed matter to a “new field” — the field that involves information stored in a memory.

  3. 3

    David, and that recent case that went to the Federal Circuit and was dismissed on standing grounds, the board apparently had affirmed in a inter partes re-examination that the claims were invalid under section 101 grounds.

    I didn’t understand how that was possible in an inter partes re-examination given that the statutory scope is limited to published prior art.

  4. 2

    Hopefully I have the latest information, but my understanding is that section 18(a)(1)(C) of the America Invents Act addresses reviews of covered business methods and reads as follows:
    (C) A petitioner in a transitional proceeding who challenges the validity of 1 or more claims in a covered business method patent on a ground raised under section 102 or 103 of title 35, United States Code, as in effect on the day before the effective date set forth in section 3(n)(1), may support such ground only on the basis of–
    (i) prior art that is described by section 102(a) of such title of such title (as in effect on the day before such effective date); or
    (ii) prior art that–
    (I) discloses the invention more than 1 year before the date of the application for patent in the United States; and
    (II) would be described by section 102(a) of such title (as in effect on the day before the effective date set forth in section 3(n)(1)) if the disclosure had been made by another before the invention thereof by the applicant for patent.

    If this is all accurate (no representations being made here), then 35 USC 101 is out of the scope of CBMs.

    1. 2.1

      Just listened to the oral arguments, the PTAB’s ability to conduct CBM reviews under 35 USC 101 was a collateral issue, and I don’t think the Federal Circuit will take on that issue (in this case).

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