Ineligible Subject Matter: 35 USC 101 Finds its Teeth (Biting into Nonobviousness)

In re Comiskey (Fed. Cir. 2007); and
In re Nuijten (Fed. Cir. 2007)

  • Comiskey’s patent application claims a method of arbitrating that does not necessarily require the use of any ‘technology.’
  • Nuijten’s patent application claims a signal containing a ‘watermark’ without being tied to a specific type of signal or any technology.

Both applications have been denied by the Federal Circuit under 35 U.S.C. Section 101 for their failure to claim patentable subject matter.

The scope of patentable subject matter is defined by Section 101 as any “new and useful process, machine, manufacture, or composition of matter.”  Any patent claim must fall within at least one of these categories.  Further limiting these categories is our precedential history that not every new and useful process constitutes patentable subject matter. See, for example, Flook & Benson.  In particular, the Supreme Court has noted that a process claim reciting an algorithm must either be (1) tied to a machine or (2) transformative of some composition of matter or device. Flook & Diehr.

Under these precedents, a claim that includes a mental process may be patentable — so long as it is otherwise tied to ‘reality.’

Comiskey: The Comiskey method of claim 1 admittedly does not require a machine, but it does require interaction with a ‘document.’  The reference to a document, however, was not enough to allow the “mental process” claim to be treated as legitimate.

“Thus, like the claims that the Supreme Court found unpatentable in Benson and Flook and the claims found unpatentable in our own cases, Comiskey’s independent claims 1 and 32 seek to patent the use of human intelligence in and of itself. Like the efforts to patent “a novel way of conducting auctions” which Schrader found to be directed to an abstract idea itself rather than a statutory category, Comiskey’s independent claims 1 and 32 describe an allegedly novel way of requiring and conducting arbitration and are unpatentable.”

Some of Comiskey’s claims arguably require a computer to operate through “modules.”  That claim construction transforms those claims to be patentable subject matter.  This means that software remains patentable subject matter if a computer limitation is a proper part of the claim.

Section 101 is Safe: Comiskey appear to reinstate something akin to the USPTO’s ‘technological arts’ requirement that had been eliminated by the Lundgren decision.  For Comiskey, recitation of a microprocessor as a limitation of the claims was sufficient to overcome the patentable subject matter issue. Notably, this is a rule of formality that, in most instances, can be followed without substantively reducing claim scope.  Under Comiskey, there is no requirement that the technical link be something novel or non-obvious. 

Section 103 is Lost: Although the question of patentable subject matter does not require a determination of nonobviousness, the reverse is not true.  Nonobviousness may now require an input from the patentable subject matter stage. The most interesting lines of Comiskey are as follows:

“The routine addition of modern electronics to an otherwise unpatentable invention typically creates a prima facie case of obviousness. Moreover, there is no pertinent evidence of secondary considerations because the only evidence offered is of long-felt need for the unpatentable mental process itself, not long-felt need for the combination of the mental process and a modern communication device or computer.”

The implicit holdings here: (1) evidence of secondary considerations do not apply to portions of an invention that are not considered “patentable subject matter;” and (2) during nonobviousness analysis, any portion of an invention that constitutes nonstatutory subject matter will be considered de facto obvious.

Nuijten: The Nuijten court bit off a bit more — finding that a signal is not patentable even if tied to a transitory form (such as a radio broadcast or light pulses in a fiber optic cable).  The problem – the court could not fit a ‘signal’ into any of the four categories:

  • Process: Process is defined in Section 100 as a “Process, Art, or Method.” The ‘art’ term appears on its face different than a typically process — especially based on the constitutional statement of “useful arts.” However, the CAFC refused to expand the meaning of process to include items that do not require an action. Thus, a signal is not a process.
  • Machine: The Supreme Court has defined a machine as “a concrete thing, consisting of parts, or of certain devices and combination of devices.” Burr (1863). Under this definition, a signal is not a machine.
  • Manufacture: The court limited a manufacture to an “article” produced by man. According to the court, an ‘article’ is not transient and cannot exist in a vacuum — both qualities of a signal. Thus, a signal is not a manufacture.
  • Composition of Matter: A transient electric signal is not a “chemical union, nor a gas, fluid, powder, or solid.” Therefore, a signal is not a composition of matter.

Failing to fit within a predefined category, the only conclusion is that a signal is not a patentable subject matter.

Rules of Practice:

  • Gangrene Treatment: In the political world of the courts, this case might be seen as the CAFC’s gangrene treatment — where the Supreme Court is the disease and patent law jurisprudence is the patient.  Several toes have already been lost, and the CAFC is cutting off a foot to prevent the disease from spreading any further.
  • Morse Code: One important statutory subject matter case is that of O’Reilly v. Morse (1853) – invoving the patenting of Morse code. In that case, the Supreme Court invalidated some claims as overbroad, but found that Morse’s claim to a “system of signals” to be patentable as an ‘art.’  The CAFC, of course, does not overrule Morse, nor does it adequately explain how Morse’s patent would fit within our modern conception of the four categories.

192 thoughts on “Ineligible Subject Matter: 35 USC 101 Finds its Teeth (Biting into Nonobviousness)

  1. >>”What is the big difference? What has been recognized forever? Do you have >>a case cite for that? When has the Supreme Court ever addressed the issue?”

    >There obviously is a big difference between acts you commit with your brain >and acts you commit with your body. Think criminal law.

    There is obviously a big difference–that was of course the point I was making. Our machines have gone from our physical acts to our mental acts. The Supreme Court has not dealt with this under a modern framework of thinking about mental acts or information processing. Consider, that the Supreme Court considers physical laws when evaluating the validity of a patent, but has never used information theory to my knowlege to evaluate the validity of a patent (and yet information theory is what is needed). The Supreme Court has come up with this notion of a mathematical algorithm (whatever that is) and has misapplied the doctrine of a new use for an old machine. The entire line of cases that address information processing is medieval.

  2. “What is the big difference? What has been recognized forever? Do you have a case cite for that? When has the Supreme Court ever addressed the issue?”

    There obviously is a big difference between acts you commit with your brain and acts you commit with your body. Think criminal law.

    Apart from that, I find it interesting that many seem to think that the law should fully take into account the laws of nature as we currently think they are.

    At an elementary level particles are waves, sure, but for the law this is hardly important. In practical real world, a judge can perfectly well decide that a car can be stolen and an electromagnetic wave cannot, even though it’s all waves for physicists.

    Law is about making practical distinctions between real world situations. In Nuijten it could have gone either way, but what the current state of physics tells us about the nature of matter and waves hardly plays a role in it.

  3. I wrote:
    >>”if we say it is invalid to claim something a person could do in their head >>then we should say it is invalid to claim a physical process that a person >>could perform using their body”

    Malcolm wrote:
    >You want a case cite for the proposition that proving a >mental act (e.g. intent) is more difficult than proving >that a physical action occurred or than an object exists? >I think it would be a good exercise for you to simply >prove this fundamental concept to yourself.

    Malcolm once again you are non-responsive, and frankly offensive. I think you simply want attention at the expensive of the quality of the discussion that can be carried out here.

  4. “Anticommons where we find ourselves” ???

    For a review of the “myth” of the anticommons see link to bio.org

    Malcolm, I would say that you have been hanging out with the Marxists in Berkeley too much and perhaps dabbling a bit too much in the “medicinal substances” that you are fond of prescribing.

    I would also say to you that patent law is no place to quote Dylan and try be tragically hip or trendy, as you seem to blow with whatever insignificant breeze crosses your Gollywobbler.

    Malcolm, for god’s sake, please get a dog, or a friend – no, a dog. How about just a hobby, other than blogging.

  5. However:
    “Conversion of a provisional application to a nonprovisional application under this paragraph will result in the term of any patent to issue from the application being measured from at least the filing date of the provisional application for which conversion is requested.” 37 CFR 1.53(c)(3).

  6. Patent term is 20 years from the filing date of the earliest non-provisional application. (Assuming you pay your maintenance fees, etc.).
    The claiming priority to a provisional application has no effect on the term of a patent. 35 USC 154(a)(3).

  7. “If an inventor files a provisional patent application and a year later files a utility application and everything is successful, does he get 20 years protection from the date of the provisional filing?”

    Yes, assuming you claim priority to the provisional filing.

  8. Please pardon my interruption for an ordinary and unrelated question:

    If an inventor files a provisional patent application and a year later files a utility application and everything is successful, does he get 20 years protection from the date of the provisional filing?, or from the date of the utility filing?

  9. “What has been recognized forever? Do you have a case cite for that? ”

    You want a case cite for the proposition that proving a mental act (e.g. intent) is more difficult than proving that a physical action occurred or than an object exists? I think it would be a good exercise for you to simply prove this fundamental concept to yourself.

  10. >>”if we say it is invalid to claim something a person could do in their head >>then we should say it is invalid to claim a physical process that a person >>could perform using their body”
    >Uh, there’s sort of a big difference between the two, from an evidentiary >perspective. The importance of that difference has been recognized in the >legal context for … well, forever.

    What is the big difference? What has been recognized forever? Do you have a case cite for that? When has the Supreme Court ever addressed the issue? Please think for at least 30 seconds before banging your keys.

  11. I’m sure we’ve all seen the radio transmitters with their towers located in a vacuum.

    Transmitting signals that travel into outer space?

  12. “Electromagnetic signals pass through vacuums inherently.”

    Malcolm, stop digging. I’m sure we’ve all seen the radio transmitters with their towers located in a vacuum.

    By my reading, the CAFC never made such a “properly stated” statement as you have alleged.

  13. “Headed for destruction just 4 years after the EU implemented its system of Community Designs? They are just so behind the times!”

    I’m talking about US design patents.

  14. “vehicles designed for space travel”

    They don’t inherently pass through vacuums. The folks at NASA sure wish they would. But no. They have to launch them into space.

    Electromagnetic signals pass through vacuums inherently. Put a signal in a vacuum and it will necessarily pass right on through, at the speed of light.

    Not so with “ships designed for space travel.”

  15. “I think, properly stated, the ‘vacuum test’ for patentability holds that if the claimed subject matter inherently passes through a vacuum it can’t be patentable.”

    That’s good, Malcolm. Thanks for the proper wording. Alright, folks, time to stop patenting vehicles designed for space travel. And actually, a vacuum can’t stop anything from passing through it, so for Malcolm it might be a good test (because then nothing would be patentable).

    “It’s a design patent — also headed for destruction. As soon as design patents become economically significant and people hire real lawyers to tear them down, kiss them goodbye.”

    Malcolm, you’re two for two – on a roll, eh? Headed for destruction just 4 years after the EU implemented its system of Community Designs? They are just so behind the times!

    link to oami.europa.eu

    And seeing as your specialty isn’t patents, perhaps you’ve never have had to concern yourself with 35 USC 289.

  16. I’ve written this before on this blog before, but it bears repeating, there are three main types of software-related claims: (i) method claims; (ii) product claims (i.e., computer-readable medium); and (iii) system/device claims (i.e., a computer(s)

    yes, and it’s the middle type that is going to go the way of the dodo because there is no distinction between “software on a computer-readable medium” and a recipe written on a piece of paper.

    In fact, software can be printed on paper. Paper is a “computer readable medium.”

    <<<<<<<<<

    Some random points:

    1) The computer-readable means (aka Bearegard) claims have machine-readable instructions encoded in a storage medium. Instructions written on paper cannot be read by computer, despite what you state.

    2) It is possible for a human to “read” machine instructions encoded onto a storage medium with the proper instrumentation.

    3)It is possible to construct a computer capable of reading instructions encoded on physical objects, e.g. a square peg signifies an “Add” instruction, a round peg a “Move” instruction, etc.

  17. …to celebrate an recent provisional patnet application filing.

    Please wish me luck. No matter how hard you work, you still need luck.

  18. I, for one, am grateful the CAFC has finally answered two questions that have bothered me for a long time.

    Re “mental processes”, if they can be practiced by putting pen to paper, then that is not OK. However, if it would take far too long and might strain existing reserves of ink and paper, then perhaps that is OK.

    Re “signals”, I like the court’s consistency of thought using “time” as a yardstick. If the signal is “transitory”, then that is not OK. However, if it is not quite so “transitory” then perhaps that is OK.

    Now all I need is a stopwatch…..

  19. “An article can’t exist in a vacuum? ”

    I think, properly stated, the “vacuum test” for patentability holds that if the claimed subject matter inherently passes through a vacuum it can’t be patentable.

    Note that this test would not capture all possible signals, e.g., sound waves. Of course, sound waves are not patentable and never will be.

  20. An article can’t exist in a vacuum?

    The Astronauts currently living in the international space station might be interested to learn that the article of manufacture they are living in can’t exist.

    Idiots

  21. An article can’t exist in a vacuum?

    The Astronauts currently living in the international space station might be interested to learn that the article of manufacture they are living in can’t exist.

    Idiots

  22. “it seems to me that advocating the demise of those types of claims is a waste of time.”

    I’m not “advocating” for their devise. I’m just telling you what’s going to happen to them and why. Lowry will be obsolete, just like the strict TSM test is obsolete now. It’s about improving the law.

    “Yes, the USPTO clearly allows patents on fonts”

    It’s a design patent — also headed for destruction. As soon as design patents become economically significant and people hire real lawyers to tear them down, kiss them goodbye.

    *mwah*

  23. Thank you, JAOI. Yes, the USPTO clearly allows patents on fonts. And (until now) the CAFC has never signaled that such patents may be invalid/non-statutory.

    Here’s a comparison between the statute and a typical design patent claim, for emphasis as to what the USPTO has been signaling through its patents:

    35 U.S.C. 171 Patents for designs.
    Whoever invents any new, original, and ornamental design for an ARTICLE OF MANUFACTURE may obtain a patent therefor, subject to the conditions and requirements of this title.

    U.S. Patent D545,886:
    The ornamental design for a TYPE FONT, as shown and described.

    Seems like the USPTO has categorized the TYPE FONT as an ARTICLE OF MANUFACTURE for some years now, and MPEP 1504.01(a) has warned Examiner’s not to reject based on any [improper] conclusion that it is not.

    So, signals in the form of type fonts are articles of manufacture or a useful improvement thereof (seems like the CAFC may have forgotten to address the improvement category).

  24. *********
    yes, and it’s the middle type that is going to go the way of the dodo because there is no distinction between “software on a computer-readable medium” and a recipe written on a piece of paper.
    In fact, software can be printed on paper. Paper is a “computer readable medium.”
    Words on a piece of paper are unpatentable subject matter.
    We’ve been through this before about 500 times and it’s at this point when the chirping of crickets becomes audible because those who claim that “software on a compouter readable medium” should be patentable do not have a compelling rebuttal argument.

    **********

    This is what MPEP 2106.01 says on the matter (not that I endorse much of what is written in the MPEP):
    “In contrast, a claimed computer-readable medium encoded with a computer program is a computer element which defines structural and functional interrelationships between the computer program and the rest of the computer which permit the computer program’s functionality to be realized, and is thus statutory. See Lowry, 32 F.3d at 1583-84, 32 USPQ2d at 1035.”

    As a general matter, I don’t see computer-readable medium claims as having much use. Typically, they are written identically to the method claims except with a different preamble. Moreover, given how distributed computing can be these days, it is very likely that the method steps are not performed by a single computer but by several computers under the control of different actors. As such, it would be harder to prove direct infringement.

    IMHO: just eliminating those types of claims (i.e., computer-readable medium claims) will do very little to prevent software-related technology from being patented. As such, it seems to me that advocating the demise of those types of claims is a waste of time.

  25. Dear real anonymous,

    Maybe the answer is that a font, or a part of a font, such as a single character of a font, is taboo utility patent subject matter.

    This link links to physical things, like calendars, ballots, maps, etc.
    link to uspto.gov

    I don’t know what bearing this may have (I haven’t really been following this thread, but I know something about fonts):
    1504.01(a) Computer-Generated Icons [R-5] – 1500 Design Patents

    To be directed to statutory subject matter, design applications for computer-generated icons must comply with the “article of manufacture” requirement of 35 U.S.C. 171

    II. EFFECT OF THE GUIDELINES ON PENDING DESIGN APPLICATIONS DRAWN TO COMPUTER-GENERATED ICONS
    USPTO personnel shall follow the procedures set forth above when examining design patent applications for computer-generated icons pending in the USPTO as of April 19, 1996.

    III. TREATMENT OF TYPE FONTS
    Traditionally, type fonts have been generated by solid blocks from which each letter or symbol was produced. Consequently, the USPTO has historically granted design patents drawn to type fonts. USPTO personnel should not reject claims for type fonts under 35 U.S.C. 171 for failure to comply with the “article of manufacture” requirement on the basis that more modern methods of typesetting, including computer-generation, do not require solid printing blocks.

  26. ****
    PDS said, “Could some “software per se” claims have slipped through in the past? probably … considering that the USPTO has allowed claims to swinging on a swing.”
    Why would the swinging on a swing claim be nonstatutory? It isn’t a mental process and it operates on a machine or composition of matter (the swing). Of course it is obvious, but that is a different issue.
    ****

    My point wasn’t directed to why the USPTO issued a bad patent. My point was directed to the observation that since the USPTO has issued bad patents before (for whatever reason), then it is likely that the USPTO has issued bad patents for different reasons (e.g., claims directed to software per se).

  27. “if we say it is invalid to claim something a person could do in their head then we should say it is invalid to claim a physical process that a person could perform using their body”

    Uh, there’s sort of a big difference between the two, from an evidentiary perspective. The importance of that difference has been recognized in the legal context for … well, forever.

    “The fact is that this is nothing more than a claim to a method for a machine. Something that is statutory.”

    No, an instruction written on a piece of paper is not a “claim to a method for a machine.” A claim to an instruction written on a piece of paper is a claim to a written expression of an idea. That’s what copyrights are for.

  28. A patent to a mental process? What does that mean? I will tell you what it means—that the claims are ill defined in the specification so that when they are construed the judge is mapping the claims to his thinking process and not the information process that should be claimed in the specification. If the judge can’t tell what is meant by claims, then it is 112–not 101.

    If the claims are well defined, the judge may say, well a person could do that. Well, yes, a person might be able to do that, but then a person could phsically do many of the physical processes that are claimed now, includnig the physical process for processing grain that is claimed in Deener. So, if we say it is invalid to claim something a person could do in their head then we should say it is invalid to claim a physical process that a person could perform using their body. This in fact leads to the whole line of thinking whether or not a computer is necessary to perform the steps that could be done in someone’s head but are too complicated.

    The point of the mental step was to prevent claims that were indefinate. So, you couldn’t claim something like adjust the pant leg, or adjust the machine, when everyone knew there was a lot of intelligence in those adjustments.

  29. >We’ve been through this before about 500 times and it’s at this point when >the chirping of crickets becomes audible because those who claim >that “software on a compouter readable medium” should be patentable do not >have a compelling rebuttal argument.

    The fact is that this is nothing more than a claim to a method for a machine. Something that is statutory. (Deener).

    What is it about a process that operates on represented informationn that makes it so hard for people to understand? Why do we continually hear abstract ideas when there is absolutely nothing abstract regarding a computer algorithm?

    It really is magical thinking. What is mathematics? what is a mathematical algorithm and what is the relationship with a computer algorithm? You are an information processor. What is an abstraction? Is that something that you the information processor uses as a heuristic to your information processing thinking and you are imputing it onto the computer.

    I don’t think anyone that has studied computer algorithms would say there is anything abstract about them. In fact, insuring that an algorithm that is published can be translated and executed on a computer is part of the standard to get an algorithm published in a jornal.

    It is like speaking with people from the medieval church. 112 is all that is needed to police claims to “arbitration.” Not 101. Throw the computer into the river and if it floats it is not statutory, and if it doesn’t we don’t have to worry about it as it is at the bottom of the river.

  30. After thinking about it, I’m not so sure that Beauregard claims are invalid now. The CAFC never ruled on whether these claims were valid or not. If a claim to a software process is patentable over Comiskey (isn’t purely a mental process added to a computer), then I would assume that a corresponding beauregard claim would be patentable as well. Of course, Comiskey may be saying more than that, but it is unclear until the next decision.

  31. No, JAOI, printed matter isn’t really taboo (they’ve got a whole class of it):

    link to uspto.gov

    P.S. you were right about patented typefaces. U.S. Patent D000001 covers a script typeface. Seems like the CAFC may have jettisoned more precedent with this decision than they did with Markman.

  32. I don’t know what this might add, but I tried to utility patent a new punctuation character and was rejected. As I recall, “printed matter” is taboo utility patent subject matter.

  33. Thank you, JAOI.

    So, what are fonts if not non-physical signals?

    35 U.S.C. 171 Patents for designs.
    Whoever invents any new, original, and ornamental design for an *article of manufacture* may obtain a patent therefor, subject to the conditions and requirements of this title.
    The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided.

    D550,277 Aldi sued type face font
    D549,273 Type font
    D548,773 Type font
    D547,365 Type font
    D547,364 Font of arabic language characters
    D546,379 Type font
    D546,378 Type font
    D545,889 Font of musical notation symbols
    D545,888 Type font
    D545,887 Type font
    D545,886 Type font
    D544,524 Type font
    D540,850 Type font
    D540,849 Type font
    D539,838 Type font
    D539,837 Type font
    D539,334 Type font
    D538,843 Type font
    D538,842 Type font
    D537,470 Type font
    D537,107 Arabic numeral type font
    D537,106 Type font
    D536,727 Type font
    D533,896 Font of symbols
    D532,036 Type font
    D532,035 Type font
    D532,034 Type font
    D531,658 Type font
    D529,537 Type font
    D528,589 Type font
    D528,588 Type font
    D527,411 Type font
    D527,040 Type font
    D526,006 Type font
    D523,064 Type font
    D522,043 Type font
    D522,042 Type font
    D521,055 Type font
    D521,054 Alphanumeric font
    D521,053 Type font
    D520,555 Type font
    D520,554 Type font
    D520,050 Type font
    D520,049 Type font
    D519,546 Type font
    D519,545 Type font
    D518,848 Type font
    D518,508 Type font
    D518,507 Type font
    D517,116 Type font

  34. Dear real anonymous,

    “If I remember correctly, Times (New Roman) was the first patented typeface.”

    For what it may be worth, as I recall, “Times Roman”, the original name being a trademark of Mergenthaler Linotype Company, predates “Times New Roman” by about 100 years.

    About 30 to 40 years ago, the “New” in “Times New Roman” was added to the name to avoid a possible trademark infringement.

    There have been about 1000 design patents on typeface designs. I believe hundreds of typeface design patents preceded Times Roman.

  35. “If 35 USC section 101 is interpreted, as intended, the business class can become subjugated to the academic class (those who create ideas).”

    Ridiculous. The business class IS the class that creates ideas, and then creates products and/or services based on those ideas.

    The Academic class (to the extent that this is a “class”) creates theories about what the business class is doing.

  36. First paragraph in preceding post should be in quotes. ARG.

    Oh, how I would love to be able to format using italics, bold, etc. …

  37. I’ve written this before on this blog before, but it bears repeating, there are three main types of software-related claims: (i) method claims; (ii) product claims (i.e., computer-readable medium); and (iii) system/device claims (i.e., a computer(s)

    yes, and it’s the middle type that is going to go the way of the dodo because there is no distinction between “software on a computer-readable medium” and a recipe written on a piece of paper.

    In fact, software can be printed on paper. Paper is a “computer readable medium.”

    Words on a piece of paper are unpatentable subject matter.

    We’ve been through this before about 500 times and it’s at this point when the chirping of crickets becomes audible because those who claim that “software on a compouter readable medium” should be patentable do not have a compelling rebuttal argument.

  38. Question:

    Are all of the issued “computer-readable medium” claims (a.k.a. Beuregard claims) that cover both storage media (e.g. CD-ROMS, memory) and transmission media (e.g. signals) invalid?

    Do the owners of patents with those claims have to hope they get a kind judge that will “interpret” the claims as only covering the storage media?

    Any cause of action or consideration for “detrimental reliance” based on the PTO’s Examiners’ Guidelines of many years ago that stated carrier waves were patentable subject matter?

  39. So, what is a typeface if not a mere non-physical signal? It doesn’t include a medium, or ink. It can exist in a vacuum, and with laser holography I can make a message in a patented typeface without matter in any conventional sense.

    If I remember correctly, Times (New Roman) was the first patented typeface.

    D373,374 Lucida casual typeface
    D373,373 Lucida casual italic typeface
    D341,848 Typeface
    D340,943 Typeface
    D340,738 Typeface
    D306,313 Typeface
    D292,988 Typeface
    D289,773 Typeface design
    D289,422 Typeface
    D289,421 Typeface design
    D289,420 Typeface
    D282,750 Typeface
    D266,006 Typeface
    D262,377 Typeface for photocomposition
    D262,039 Typeface for photocomposition
    D262,038 Typeface for photocomposition
    D261,900 Typeface for photocomposition
    D261,899 Typeface for photocomposition
    D261,898 Typeface for photocomposition
    D246,936 Arabic typeface

  40. PDS said, “Could some “software per se” claims have slipped through in the past? probably … considering that the USPTO has allowed claims to swinging on a swing.”

    Why would the swinging on a swing claim be nonstatutory? It isn’t a mental process and it operates on a machine or composition of matter (the swing). Of course it is obvious, but that is a different issue.

  41. I think the judges on this panel when asked how “arbitration” gets represented on a computer would say “it’s turles all the way down.”

  42. Just a Patent Attorney (& EE) “ironicslip thinks US5757912 patents a signal. As an EE, I respectfully disagree. Claim 1 of that patent is for a method that uses physical structure to detect and act on a signal.” >> with due respect, my comments are in the context that >> … the method matches encryption (cryptographic algorithm) with quantum mechanics (how energy relates to matter) … (it’s turtles all the way down) …

    >> that being said, again respectfull;y posed, if i possess quantum money does that qualify as a signal that can be patented or is the value solely in some “physical structure”?? and, if the *value* is in the signal, why does the physical structure matter?? how about if my bank uses quantum money to settle transactions?? are the transaction and/or photons then patentable (a’la state street — useful tangible result — i get paid, bank gets vig, velocity of money increases, etc.)

    the issue i am observing is the inherent inconsistencies between patent protection and copyright protection … (KCB has additional comments)

    my argument boils down to what people pay for to establish what the value of the invention is — people buy products and services, not patents.

    if we knew what would be valuable (which goods and services corresponding to which patents, trade secrets, copyrights, etc.) we wouldn’t need middlemen or a market-based economy … we (who is “we” is the basic issue) could just pick winners and extend protections into the future without regard to the interests of society.

    (besides money wont bring his game)

  43. Debating MM is like pig wrestling. Although the pig enjoys a good romp in the mud, you end up dirty, tired, and asking yourself afterwards, “why did I ever do that?” Moreover, although I have publicly avowed to kick the pig wrestling habit, occasionally MM writes some that I cannot resist responding to.

    Although I would not opine on biotechnology-related patent law (without extensive disclaimer) because I don’t have enough (any) experience in that field, it appears that others, similarly ill-equipped to address a particular field of technology, nevertheless feel the need to express their ill-conceived opinion.

    MM writes:
    “But software patents will become unpatentable soon. You can take that to the bank because software isn’t any different from a recipe written on a piece of paper.”

    Although this area of technology wasn’t what I “cut my teeth on,” I have prosecuted a couple hundred software-related patent applications over the last couple of years. I’ve written this before on this blog before, but it bears repeating, there are three main types of software-related claims: (i) method claims; (ii) product claims (i.e., computer-readable medium); and (iii) system/device claims (i.e., a computer(s) performing a particular function or having modules performing particular functions). Based upon my experience, no competent attorney drafts claims directed to software per se anymore.

    In fact, anybody who has prosecuted in the 2100/3600 art units knows that any claim an examiner could conceivably argue is software per se gets a 101 rejection. Again, based upon my experience 98%+, of those rejections are bogus (not because the claims are directed to software per se, as argued by the Examiner, but because the claims are directed to statutory subject matter). However, the rejections are made. For someone to talk about “software patents” being patentable is misusing the phrase “software patents” and/or has a very poor understanding of how software-related applications are claimed and how the USPTO treats those claims.

    Could some “software per se” claims have slipped through in the past? probably … considering that the USPTO has allowed claims to swinging on a swing. However, to believe that patents to software per se are being issued today does not reflect my experience in this field.

  44. “I mean signals are constantly bouncing around in your world, all you have to do is capture them and you will probably be able to perceive what ever content you desire.”

    My tinfoil hat is ringing right now!

  45. With respect to a signal, I am simply depressed at the complete lack of competence in this area. Firstly a signal is NOT transitory. If anything, a signal is more than likely to most consistent phenomenon that can be the subject of a patent. A signal is pure energy, which, as this young high school student correct grasped CAN NEITHER BE CREATED NOR DESTROYED. link to van.physics.uiuc.edu. Therefore, it is not transitory. This is what makes me laugh about so-called copyright infringement. I mean signals are constantly bouncing around in your world, all you have to do is capture them and you will probably be able to perceive what ever content you desire. The fact is the content providers don’t want signals patented, because this will infringe upon their revenue from Copyright protection. I am waiting for the person to sue a radio station for trespass, i.e., having a signal propagate through their body.

  46. Simple analysis here. Nothing earth shaking. This is getting to be as easy as constitutional law. In other words do not look for legal logic in some of these opinions, because they are deeply rooted in class struggle. Quite simply, the business class struggled for centuries to end the power of the progeniture class. That was the beauty of the United States of America. It effectively ended the rule of the progeniture class by making the desires of business paramount. In the information age we find ourselves in the midst of another class stuggle of the same proportions. If 35 USC section 101 is interpreted, as intended, the business class can become subjugated to the academic class (those who create ideas). The business class has consistently pressured Congress and the Courts to mutate the patent system to not be about new ideas, but about new products. With the advent of new products, incorporating new ideas, you get patent rights. With this structure in mind, what we have experienced in the last five years seems to make sense. As for taking sides . . . I am still out on that. I must spend a few more years of analysis before I can have the requisite information to form an opinion. I did, however, write a law review article on this subject over a decade ago.

  47. ironicslip thinks US5757912 patents a signal. As an EE, I respectfully disagree. Claim 1 of that patent is for a method that uses physical structure to detect and act on a signal.

  48. Some people have misunderstood my comment regarding Nuijten. All I wanted to say was that no matter how scientifically inaccurate the decision is, it has only a minor effect on patent practice. This year, we have much bigger problems (e.g. Pfizer v Apotex).

    As for Nuijten:

    Should signals be patentable?
    Yes. People should be encouraged to develop useful, novel, not obvious signals because these advance humanity. Imagine signals that confuse IEDs in Iraq, act as non-invasive anesthetics or pain killers, or allow you to increase the information you pass on a single physical line.

    Did the CAFC have to rule that signals were not patentable according to the law?
    No. The way the law is written, the CAFC could have ruled either way. The fact that the CAFC chose against patenting signals implies that a policy decision was made, a priori.

    Will this effect patents?
    Patents will become more expensive and sillier, patent attorneys will become richer. Instead of describing what was actually invented in a simple clear claim, patent attorneys will be forced to find convoluted ways of saying the same thing. Patent prosecution will be more tedious as the poor Examiners try to understand the convoluted claims and how they relate to equally convoluted prior art. When claims are issued, infringment won’t be clear so patent attorneys on both sides will make lots of money.

    I personally have nothing against patent attorneys getting rich, but I feel bad for the Inventors who waste money and time overcoming unneeded legal hurdles instead of working.

  49. PATENT ATTORNEY is correct, that software is itself already in copyable form, the ease of copying is great for those who have the channels (m$ft or the others for “patent fairness” – and copyright owners who control the copies).

    So, it is cheap to eliminate the risk that an independent inventor contributed the improvement … it would simply be spent elsewhere (and certainly not on discounts to their “customers”). It is unfortunate to cop[yright holders and patent-hoilders that the cheapness of copying also helps those with lots of cheap or “free” bandwidth …

    too many corporations give just enough to keep you employed and not enough to give you credit … we should encourage risk taking (even if money probably is probably a wage earner) as no other approach appears to work … it’s too bad that money and principle are typically at odds

  50. >>”I bet you there are over 100k patents pertaining to light emission: lasers, UV, spectroscopy, astronomy, optics, etc”

    Pertaining? Please don’t move the goalpost. Show me one patent claiming a ray of light itself as composition of matter. Just one. Or, for that matter, a sound wave itself (which, incidentally, can’t travel through a vacuum).

    Just one.<<

    alright, money …

    what is quantum cryptography without a composition of matter solely dependent on light — which incidentally can travel through a vacuum

    – (btw, so what if a sound cant travel through a vacuum, it cannot be heard without moving air and putting pressure on your psycho acoustic ability — you can copyright it) –

    and since it is not a “ray”, perhaps you can shed **light** on why this type of invention should not be afforded the protections of a patent (see below)?
    how about important to data security?
    is cryptography lacking a useful tangible result by its use?
    what is key space anyway, money?
    national security (well, when we can do more than 4 qubits)?
    why is a copyrighted song (a signal) protected with DMCA based on signals that indicate tampering of a “protection device” 1201 (b)?
    hmmm protection for the signal without question but not the signal that triggers the indication of tampering?
    sounds very illogical?
    why don’t you make a case that you understand?

    people buys goods and services, NOT PATENTS … why? how do you discount unknown cash flows attributed to yet to be introduced products and services based on inventions that were put into patent applications? you must have eaten too many chinese-made toys…

    US5757912: System and method for quantum cryptography

    In a method of communication using quantum cryptography an encryption alphabet is used for coding signals for transmission on a quantum channel. The encryption alphabet comprises pairs of operators applied successively to single-photon signals transmitted onto the quantum channel with a predetermined delay between them. When the signals are detected the different signals of each pair are split according to their encoded state and directed to different detectors via paths giving a differential delay. The delay is substantially complementary to the original pre-determined delay. Coincidence detection is employed at the detectors to eliminate spurious detection counts.

    1. A method of communication using quantum cryptography comprising the steps of:
    coding signals for transmission on a quantum channel using an encryption alphabet said encryption alphabet comprising pairs of operators applied successively to single-photon signals transmitted onto said quantum channel with a predetermined delay between said single-photon signals;
    detecting the single-photon signals, wherein different signals of each pair are split according to their encoded state and directed to different detectors via paths providing a differential delay substantially complementary to the said predetermined delay;
    detecting coincidence to eliminate spurious counts.

  51. My understanding of the EPO approach is that for an invention to be patentable, they must extract all the “non physical” parts, and if what is remaining is non-obvious, then a patent can be granted. Is this not correct?

    This approach would be the end of software patents in the U.S., except for the limited exceptions where a new piece of hardware is associated with the software. This is very rare.

  52. We will not know how to interpret In re Comiskey until we see what comes next.

    Adopting the EPO approach will not be the end of software patents. The EPO still allows software patents, albeit the claims are narrower in scope.

  53. AnonymousAgent, if a claim would specify a sequence of steps and add that it is implemented in “hardware” in an FPGA, then from an obviousness point of view that would be the same as adding that the steps are implemented in “software” in a flash or magnetic medium. (Given that it is equally obvious to implement something in software as it is to use an FPGA.)

    However, claiming a particular combination of electronic components that has some special advantage that not any straightforward implementation would have, would probably add something inventive to the series of steps.

  54. Could one of the “anti-software patent guys” explain to me why a program implemented in an FPGA is “hardware” and thus deserves patent protection, but why the same program implemented in code stored in flash or magnetic media is “abstract” and not deserving of patent protection???
    Do you actually care???

  55. I don’t think the people who speak of getting rid of software patents understand the role patents have had on software.

    I have been involved in software development for 25 years, so when I began patents had little or no role. And it was a horrible environment where everything was a secret. It was hard to get capital for most projects because an analysis would always be done of who would copy the software. The first software start-up I worked for was in 1984. It was a time when Microsoft tried to get a copyright for all the software you developed using their C compiler.

    Now, when you develop new software if you don’t protect it, people will copy your idea verbatum as soon as you start making any money. Without patents, Microsoft and other large software companies will simply take anything that has any commercial value. I was part of a start-up software company in the late 1990′s where a large software company told us during negotiations to purchase the company that if we didn’t have protection that they would simply copy our software.

    I have also worked for large corporations and have evaluated buying software from small start-ups. We always determine whether we can just build it ourselves. If it is not protected then the value is only the cost of building it ourselves. And if you decide that it would be better to outsource it, then the start-up has to worry about competitors simple copying their software (and really spending a few days rearranging software to get around copyright law is not hard.)

    I predict that what will happen is capital will dry up for software outside of the large corporations. That will mean that progress will dry up. Any one that has been in the business of software development and knows how to read past corporate news releases knows that progress in software hsa come from start-ups and academia. Not corporations.

    Further, I think there is ignorance on the role computers play in our society. And wide ignorance of how different a machine is with differnt software. Consider sorting. With the first sorting algorithms invented it would take tens of years to sort the names of everyone on the planet, but with the newer sorting algorithms it can be done in the blink of the eye. The software is the difference–not the hardware. These are machines that process information. No magic. No mental process. And the how you get that processing done makes a BIG difference. We could not even perfrom a census of the US without computers.

    A computer is a machine, and a very different machine depending on the software. And anyone that understands computers knows that the software is the machine. The hardware is but a slave. Computers are very cleverly designed so that the machine is really the software.

    Copyright is there, but simply would not work. If you want to get an idea of what life will be like under copyright law, read an article (cite) from Gingburg, daughter of supreme at Columbia, written in the mid-1990′s on using copyright protection to protect the structure of computer programs.

    Another topic: the supreme court’s assumption without any factual analysis that patenting small steps in process is bad for the promotion of the useful arts is simply not true. The fact is that these small steps are now how progress is made. (another KSR gem is the Supremes saying contrary to Judge Rich that the 1952 act affirmed their earlier cases and that 103 was not meant to replace the earlier analysis, which of course it was meant to replace the earlier flash of genius.)

    The real problem here is that people that are ignorant of the business environment and ignorant of the technology are trying to fix a problem that is ill defined or has been defined by large corporations.

    Isn’t it funny too that the corporations that have been screaming the loudest about patents have been hiring 1000′s of researchers in computer science. So, I wonder why should microsoft have a giant research institute without patents? Maybe for the public relations value, but without patents it is far easier to let someone else do the research and copy it. And I think an argument could be made under corporate law that a research institute is waste and may be that would hold up under a derivative shareholders’ suit.

    Finally, anyone who believes all of these software patents are obvious and just so easy to understand is kidding themselves. Try actually developing software and then have a competitor come out with better software and look yourself in the mirror and think gee that is so obvious why didn’t I think of that!!!!! Well, it was because it wasn’t so obvious AT THE TIME OF THE INVENTION.

  56. ” The flaw in the Supreme’s aborted analysis in Labcorp was to focus on the interpretation of the results of the assay rather than the requirement that such a claim contain the assay in the first place.”

    Not to veer off-topic, but I don’t think the Supreme’s (i.e. Breyer’s) reasoning was flawed. In LabCorp, the assay was old and the patentee admitted that the claim scope included merely thinking about the result of the assay (i.e., recognizing the fact of the newly discovered correlation).

  57. Kevin

    “There is (should be) the step of performing an assay to determine the level of analyte Z in the first place. If there is not, then the claim could be in trouble.”

    Good point(s). And it’s true that nearly every claim of this type that you see includes this step. But let’s say that the diagnostic marker in question is one that is assayed in other contexts in the prior art. In that event, all of the steps are old *except* the mental one … not unlike the case with the novel (but unpatentable) algorithm combined with the computer. I think one could argue (perhaps not successfully) that under Comiskey such a diagnostic claim is prima facie obvious. On the other hand, it may be relatively easy to rebut that finding …

  58. The most troubling part of this opinion is the court reaches its dubious conclusion without articulation of a rule. Is the court saying that all non-statutory elements of a claim are not to be considered in an obviousness analysis? This would be very bad. Or is the court merely saying that if a method, as a whole, can be implemented purely mentally, then adding merely a computer is still unpatentable? I think the latter is what this case stands for. And then there is the wishful thinking interpretation that the opinion was written sloppily and “unpatentable” means due to 103, which would mean that this case doesn’t change anything. But I think the latter interpretation is probably wrong, based on everyone’s consensus here.

    If the first two interpretations are correct, then the CAFC is mixing 101 and 103. This doesn’t make any sense. If part of a claim is nonstatutory, then an otherwise nonobvious claim is now obvious?? The court could and should have instead rejected all claims under 101 by stating that a mental process doesn’t become statutory by merely adding a computer. That is in essence what the opinion stands for, I think.

    I hope the third forthcoming 101 case will clarify everything. But then again, I fear it may put me out of work.

  59. Malcolm:

    I think the distinction in the diagnosis claims is that they recite an assay – i.e., a tangible manipulation of a biological sample to determine the level of an analyte that is diagnostic of the disease. The flaw in the Supreme’s aborted analysis in Labcorp was to focus on the interpretation of the results of the assay rather than the requirement that such a claim contain the assay in the first place. Diagnostic method claims are rarely (never?) “A method for diagnosing a disease when the level of analyte Z is less than some value Y.” There is (should be) the step of performing an assay to determine the level of analyte Z in the first place. If there is not, then the claim could be in trouble.

  60. “While it is difficult to determine in certain cases what involves technology, still it would seem that a mere series of mental steps does not.”

    Of course it doesn’t. You can’t patent a thought. That would be like patenting a fact. Can’t be done.

    One *important* type of patent that gets pushed to the brink of the cliff with Comiskey, however, are patents for diagnosing diseases. Such patents are usually based on a new “discovery” of a correlation between the results of a test and an illness. The claims cover methods of using that discovery (i.e., a new fact) to do something (diagnose illness). As we know from the Supremes dicta in Metabolite Labs, unless there is a step in the claim that recites a tangible result (e.g., reporting or recording the diagnosis to a subject) the claim is unpatentable as a patent to an idea itself.

    But under Comiskey, should the novelty of the correlation itself, since it is an unpatentable fact, be a consideration at all in determining the patentability of the claim under, say, 103? If it isn’t, then all diagnostic claims should be prima facie office under Comiskey’s reasoning.

    [cue up Beethoven's fifth ... again]

  61. I don’t think Comiskey invalidates software patents.

    But software patents will become unpatentable soon. You can take that to the bank because software isn’t any different from a recipe written on a piece of paper.

    Composition and process claim describing a computer executing non-obvious instructions encoded by particularized software will remain patentable.

    You’ve been warned.

  62. “I bet you there are over 100k patents pertaining to light emission: lasers, UV, spectroscopy, astronomy, optics, etc”

    Pertaining? Please don’t move the goalpost. Show me one patent claiming a ray of light itself as composition of matter. Just one. Or, for that matter, a sound wave itself (which, incidentally, can’t travel through a vacuum).

    Just one.

  63. Agree with Patent Leather. After Comiskey, State Street speaks to innovative applications of technology that have a business purpose; not the many current business process patents involving processes rooted in “human intelligence” that just happen to use proven technology for implementation. Such processes will no longer qualify for patent protection after Comiskey.

  64. Michael,
    Well… I do not think that every creation of the human mind meets the 101 threshold. While it is difficult to determine in certain cases what involves technology, still it would seem that a mere series of mental steps does not. In in re Benson, Judge Rich explains why he believs computers and data processing ought to be considered statutory subject matter. Note his distinction between “useful arts” and “liberal arts”:

    “It seems beyond question that the machines-the computers-are in the technological field, are a part of one of out best-known technologies, and are in the “useful arts” rather than the “liberal arts,” as are all other types of “business machines,” regardless of the uses to which their users may put them. How can it be said that a process having no practical value other than enhancing the internal operation of those machines is not likewise in the technological or useful arts?”

  65. Not to be argumentative, but there is no constitutional requirement that an invention involve “technology”, a term that is amorphous at best. I for one am not prepared to jump on a bandwagon where “technology” is necessarily a constituent part of the term “art”.

    I would have a difficult time denying him access to the benefits of Title 35 merely because what he has done involves the conduct of arbitration, subject matter that some may feel is not deserving of passing through the Section 101 gate.

  66. State Street didn’t address whether there were any limits on business method patents, just that there was no special exception to patentability. The invention in State Street was an application of technology for a business purpose. Judge Rich rightfully concluded that this is not per se nonstatutory. However, just because an “invention” involves a method of doing business doesn’t mean that it is an application of technology (within the technological arts) that warrants patent protection. The requirement that the invention involve technology is of constitutional magnitude. A technique for two people arbitrating a dispute, for instance, is not something that should be patented. It has nothing to do with the purpose of granting a patent which is to reward those who contribute to the advancement of the useful arts (technology) by providing for a limited time the exclusive right to make and sell the invention. It may be some type of contribution to society but not one for which a patent should be granted.

  67. After reading this case for the tenth time, now I am inclined to think that “unpatentable” refers to 103, not 101. The infamous paragraph follows with footnote 16, which cites three 103 cases. If they were referring to 101, why would the footnote cite these case?

    This opinion is sloppy, sloppy, sloppy. If we don’t know what it means, how will the USPTO?

  68. Are we entering a new Dark Ages? I mean, this is ….ed up, man. Didn’t anyone do a “Flat Earth Society” check on those CAFC judges? “Can’t have that quantum mechanical majic hoodoo voodoo in patents!”

    Did technology and the hard sciences accelerate too fast for these guys to keep abreast of at least a Reader’s Digest understanding? I mean, this stuff was already more than a half a century old when I first encountered it.

    What a joke, and this is coming from Mr T. My head is about to explode!

  69. “I just find it hard to believe that this particular panel simply screwed up – could they have really been that sloppy???”

    … It would have to be pretty sloppy — even for Judge Dyk. The more I think about it, the more I fear that metoo is correct that “unpatentable” referred to Section 101, rather than 102+103.

    It looks like Flook was no fluke.

  70. Look at the macro forest instead of the micro trees. Whatever the reasons, Comiskey is the CAFC’s way of reacting to State Street’s impact. State Street has been interpreted by the PTO as permitting a wide variety of business process patents. Comiskey severely narrows this interpretation. No, it doesn’t overturn State Street. However, it does severely restrict the ability of many business processes to be patentable under it. Many patents issued under the inital broad interpretation of State Street will likely be found invalid.

    Anybody believing that Comiskey is sloppy drafting is smoking something. The typical judicial response to a case based on 103 is to rule based on 103. Taking the rare step of holding that 103 issues need not be addressed because of 101 applicability is no accident. If the CAFC did not intend to make a very broad statement, they never would have taken this route.

    Comiskey will turn out to be a Very Big Deal

  71. I also think this case might not be so significant if it is limited to its facts. I doubt there are many claims that are purely “mental processes.” The case doesn’t go so far as to propose an extraction test, that is, if claim 1=A, B, C, D; A is a non-mental process or apparatus; and B and C are mental processes (formulas or the like) and D=simply a computer, then A must be nonobvious for the claim to survive. If this is what the case stands for, then this would really be a bombshell (this is the European rule) and most software patents would now be invalid. The court instead took the original first claim as a whole and concluded it was a mental process in its entirety. It is true that every element of claim 1 could be performed in your mind.

    Thus, let’s just hope that this case stays limited to these facts. Some clever claiming (tying in physical materials) may also work around a claim being considered a “mental process.”

    Of course, some may say that since the computer claim added non-mental steps (the computer) and the court said this claim was likely obvious since the non-computer elements were unpatentable, that the court is really propounding an extraction test. But the opinion didn’t quite put it this way. So if I get a 101 rejection during prosecution, I will just have to argue that the underlying method cannot be performed entirely in someone’s mind.

  72. Food for thought…seems to me that most are in agreement that this case is rather significant if they really meant to say “unpatentable” rather than “obvious”. If the panel simply messed up and really meant to say “obvious” instead of “unpatentable,” then this case is not such a big deal (although it still would be significant).

    But, is there perhaps some shenanigans going on here in that this panel saw an opportunity to get the CAFC to revisit Flook/Diehr en banc, and perhaps ultimately get the issue up to the Supremes? I just find it hard to believe that this particular panel simply screwed up – could they have really been that sloppy??? The facts of this case (i.e., the claimed invention) is about as straightforward as you can get, so they might see it as the perfect vehicle for looking at the issue (Flook/Diehr). Of course if true, it would portend a reinforcement of the old adage that “bad facts can make bad law.”

  73. Some more food for thought: How does Comiskey reconcile with State Street? Doesn’t Comiskey have a practical application? Wasn’t State Street a “mental process?”

  74. I disagreed with Dennis above and his characterization of “unpatentable” but after further review, it appears Dennis was right (as always).

    “Under these precedents, a claim that includes a mental process may be patentable — so long as it is otherwise tied to ‘reality.’”

    So I guess the key here really is, what does “reality” mean? If a computer implements a non-obvious algorithm (and the algorithm only non-obvious feature of a claim) that is “tied to a machine,” is that statutory? Perhaps most software patents are still valid now since most claims would be tied to something in “reality.”

  75. Malcom Mooney:
    Somewhat OT:.. benefitted (and continues to benefit) from the availability of cheap knock-offs. The logic is relevant to the music industry as well…

    The same logic is relevant to the software industry as well. In fact, by some indications, illegal copies are what helped Microsoft expand their dominant position, by increasing market gray share. Once entrenched, they start to fight back harder against piracy, because they are losing more than they can gain. Music and fashion are a bit different business models, more consumption-driven than dependent on an installed base.

  76. Lonnie E. Holder:
    …should not be patentable UNLESS the computer method used a non-obvious feature to make that analysis.

    What about the inherent capacity for networking and automation that a computer-implemented method can provide?

    For example, Ann calls you and takes down your name, address, and phone number by hand. Bill builds a website that allows millions of people to provide the same information electronically in the same time. Bill collects more information than Ann could collect in a lifetime of calling, perhaps more than is possible using any amount of available labor. Bill’s system is not simply the same thing Ann is doing, but automated–it includes communication, storage, scalability and speed. Are you telling me Bill’s website/database, if covered by claims that are novel and non-obvious, should not be worthy of a patent? Can you explain why not?

  77. Malcom Mooney said:

    ‘”But if a claimed algorithm is “non-obvious” and a “computer” is added to the claim, is the result then patentable? THAT is the question…”

    If it’s just those two limitations in the claim, the answer is that it’s prima facie obvious under Flook/Comiskey because the algorithm is unpatentable and the computer is old. The only major issue (to rebut the prima facie case) is whether the combination of the two is taught away from or unpredictable.’

    If this is true, then all software patents are currently invalid. Did the Comiskey case overrule State Street? I don’t think so. Did Comiskey just wipe out billions of dollars worth of software patents?

  78. Malcom Mooney:
    No, it’s not at all. They recognize that by including signals as “articles of manufacture” then light emissions are “articles of manufacture” and a claim to light emitted from anything novel is therefore patentable and that’s a friggin joke.

    You last statement appears simply ignorant. I bet you there are over 100k patents pertaining to light emission: lasers, UV, spectroscopy, astronomy, optics, etc. So, the current decision if upheld, would scientifically undermine a great deal of patented science. That is why the court’s inability to recognize what a signal really is, is the bad joke here. It’s not the question of whether the subject matter covers an article of manufacture, it is the question of if it is man-made or not, and perhaps, if it is unfairly infringable in commerce. Actually, they need to reconsider the categories, perhaps include more items under compositions of matter, like…signals, nanostructures, superfluids, electronic states…

  79. AttorneyH:
    “Second, justifying a decision that ignores “modern” (i.e., last century) physics theory and that, as an electrical engineer, I find to be quite embarrassing, with the rationale that “they could have claimed it this way or that way instead” missing the entire point of the discussion–whether a signal is patentable subject matter or not–and is unenlightening.”

    Perhaps it is the discussion that is missing the entire point. That is, with proper claim drafting, that means careful consideration of patentablity, infringement, and enforcement, many of the “challenges” can be overcome. The remaining legal finesse appears to me to blow in the wind from one CAFC decision to the next, so how can you plan that?

    If you want to get down into the signal issue, metaphysically, the actual operational state of any solid state circuit is ultimately no different from a transmitted signal. The money in your bank account is nothing more than some electronic energy states in a semiconductor. Even the display showing this message is simply emitting intangible signals. A signal is nothing more than energy states of photons, radar waves, electrons, going through a medium. Scientifically, if signals are unpatentable, then all powered on states of electronic devices should also be unpatentable, because there is nothing tangible in the processing or display hardware. (Not storage though. Some storage means may actually change the physical, optical or magnetic states of matter). Signals are the basis for all electronic information. However, this blows those minds who are still anchored in (yes, last century) value system based on physical objects, devices machines, and now microchips. Therefore, just the signal itself is too abstract an idea for humanity (at least the CAFC, SCOTUS) to consider patentable, at the moment.

    What I am saying, is that it probably doesn’t matter either way. You can patent the same signal characteristings at the source or the sink, though some infringement situations might get tricky. But if you did patent the signal, you would get folks retrofitting signal converters at various points in the chain to get around your signal claims, which would also make some infringement scenarios difficult. In the end, you want to cover all your bases either way.

  80. ” a signal is a manufacture, and the court’s reasoning otherwise is scientifically garbage.”

    No, it’s not at all. They recognize that by including signals as “articles of manufacture” then light emissions are “articles of manufacture” and a claim to light emitted from anything novel is therefore patentable and that’s a friggin joke.

    Denying this elementary fact is “scientific garbage” but I’ve yet to hear one of you bigwigs who support the patenting of signals address this fundamental problem.

    Let’s face it: the Supremes have better things to do than to inform y’all that some patent that expired more than a century ago under was junk.

    All this business about Einstein blah blah blah. Yeah, let’s rewrite every law to take into account the wave/particle theory of matter. Sure. Congress will get right on that.

  81. Perhaps over the weekend I’ll work on my analysis showing how Nutjen lays the foundation for obliterating product-by-process claims forevah.

  82. Dave Brophy:
    A very interesting and practical situation have you described, yes.

    In such a case, a competent prosecutor would have filed PCT in all possible countries, and also included independent claims on the unique receiver of the signal. A set of means plus function claims on both the receiver and transmitter of the signal are probably well deserved as well. I believe that covers the situation of beaming the signal internationally, at least theoretically.

    As for countries where IP infringement is not enforceable, tough luck and good night.

  83. AttorneyH:
    I do think outside of the patent prosecution box, that is why I stated that there is some usefulness in patenting the actual signal in my original post. However, the practicality of licensing and valuation of allowed patent claims have absolutely no bearing on the patent laws, which IMHO need to be fair and equitable to all inventors.

  84. I think mmmbeer is absolutely right, but Comiskey seems to render his 3rd example unpatentable. This does seem to be a real change in the law.

    As for Nuitjen, it is simply wrongly decided, for two reasons. Firstly, because a signal is a manufacture, and the court’s reasoning otherwise is scientifically garbage. Secondly, O’Reilly v Morse was a Supreme Court case and can’t be distinguished by a lower court ruling on the same issue.

  85. Re that previous comment, that is my understanding of the law AS IS, not as it should be (and that’s “should be” under a strictly legal/logical argument; there are compelling reasons for denying patentability to software that are unrelated to questions of legal consistency).

  86. “But if a claimed algorithm is “non-obvious” and a “computer” is added to the claim, is the result then patentable? THAT is the question…”

    If it’s just those two limitations in the claim, the answer is that it’s prima facie obvious under Flook/Comiskey because the algorithm is unpatentable and the computer is old. The only major issue (to rebut the prima facie case) is whether the combination of the two is taught away from or unpredictable.

  87. Malcom,

    But if a claimed algorithm is “non-obvious” and a “computer” is added to the claim, is the result then patentable? THAT is the question…

  88. “Digging into these details is where patents should be issued, because actually being able to arbitrate with the aid of a computer would be something.”

    Actually being able to arbitrate with a computer REPLACING THE ARBITRATOR would be something. Other than that, big whup. Plenty of arbitrators use computers. Calculators, too.

  89. Here’s the quote again:

    “The routine addition of modern electronics to an otherwise unpatentable invention typically creates a prima facie case of obviousness. Moreover, there is no pertinent evidence of secondary considerations because the only evidence offered is of long-felt need for the unpatentable mental process itself, not long-felt need for the combination of the mental process and a modern communication device or computer.”

    Here’s your answer: the first use of unpatentable refers to either 103 or 101. It doesn’t matter which. If a claimed invention is obvious, it will remain *prima facie obvious* after you recite a limitation “wherein a computer.”

    The second use obviously refers to section 101.

    Software is unpatentable if the logic/process of the software is obvious. Period. That was ALWAYS the case. Was the law applied appropriately by the PTO? No, it definitely wasn’t. And that sad fact gave birth to an entire industry of software patent abusers.

  90. “The routine addition of modern electronics to an otherwise unpatentable invention typically creates a prima facie case of obviousness.”

    There seems to be some discourse as to whether “unpatentable” in the above quote means due to 101 or 103.

    If “unpatentable” refers to 103, then the Comiskey case isn’t that significant in my opinion, since all that you need to do is merely add a computer to your claims (something I have always done anyway in case a case like this would come along)

    If “unpatentable” refers to 101, then this case basically means that software is no longer patentable and we have now adopted the european standard.

    I wish I could simply call Judge Michel and ask him what he meant. Does anyone know of any other articles or authority to clarify this issue?

  91. Somewhat OT: there is a short but interesting article in the most recent New Yorker describing why/how the fashion industry has benefitted (and continues to benefit) from the availability of cheap knock-offs. The logic is relevant to the music industry as well except that the people who run the music industry are far more corrupt, greedy and uncreative than those in the fashion industry.

  92. “This language may be the death knell to all of the business process patents related to financial, investment, tax, insurance and similar planning areas where individuals come up with creative ways of saving taxes, enhancing investment returns, etc.”

    Maybe the CAFC is reading the tea leaves in the Patent Reform Bill that would explictly exclude patents on tax methods and the Supreme’s dicta on business methods in a preemptive strike. The last thing they want right now is another SC decision that they have been wrong all along. In the current climate they probably wouldn’t get reversed for narrowing subject matter under 101.

  93. After reading Comiskey several times, it appears that in relation to business method patents that this case may be as far reaching as State Street itself, in terms of its impact. One wonders if the recent and unusual beating that the CAFC has been taking at the Supreme Court has had a broad effect on the CAFC’s thinking.

    Unless I missed it, none of the above commentators made any mention of what may be one of the CAFC’s most telling comments in the decision, and a possible indication of how the Court’s thinking has evolved. The CAFC stated in Comiskey, “Although it has been suggested that STATE STREET BANK supports the patentability of business methods generally, STATE STREET BANK explicitly held that business methods are subject to the same legal requirements for patentability as applied to any other process or method.”— The decision then goes into the numerous limitations discussed above, The thinking in this case may well invalidate most business process patents.

    I am not alone in my belief that most, but not all, patents that tie business processes to computers are primarily a matter of language translation, like translating a book written in French to English. What is really happening when describing the computerized implementation of almost any process, is the translation of the non-computerized version into Cobol, C++, Java, XML, etc. While this may be technically and administratively complex, and might require a microprocessor’s capabilities to make the process efficient, Comiskey is formally recognizing that this is not the stuff of innovation.

    The Comiskey Court also held, “The patent statute does not allow patents on particular systems that depend for their operation on human intelligence alone, a field of endeavor that both the framers and Congress intended to be beyond the reach of patentable subject matter. Thus, it is established that the application of human intelligence to the solution of practical problems is not in and of itself patentable.”— This language may be the death knell to all of the business process patents related to financial, investment, tax, insurance and similar planning areas where individuals come up with creative ways of saving taxes, enhancing investment returns, etc.

    I’m interested in anyone’s thoughts.

  94. “You must be a prosecution attorney in a firm, then”

    Not so, look up my registration. I was in-house counsel of an end user (not my current employer) who argued with management not to settle with trolls in the past but lost out because “it’s cheaper to settle than to defend”.

    Interestingly, this same company would litigate workman’s comp claims of its employees even when legal costs exceeded the claims because if they didn’t look tough they were afraid they would get more claims.

  95. “But you’re missing out on this really exciting moment in the history of patent prosecution where we have to review all of our clients portfolios and report the “related” applications and “distinct” claims to the PTO by February 1, 2008″

    Unfortunately, I am not missing out on these “exciting” times. I still prep & pros and value my reg. number. But at least I don’t have to locate and identify “related” applications that exist across multiple outside firms and then comment on how those applications, written to different standards, are distinct from one another. Good luck with that one!

  96. “So you don’t think about portfolio management, assertion, and licensing.? You must be a prosecution attorney in a firm, then–get a patent for the client no matter how invaluable it is, bill my hours, and move on. Your choice–I did that for a while too, until it got boring. ”

    But you’re missing out on this really exciting moment in the history of patent prosecution where we have to review all of our clients portfolios and report the “related” applications and “distinct” claims to the PTO by February 1, 2008. Maybe I should think about donating a kidney now. By the time I get back to the office, it’ll be March at least.

  97. mmmbeer, thanks for laying the foundation.
    I’d say that 3 and 4 should be patentable and non-obvious … but in view of Flook/Comiskey they’re both arguably per se obvious in view of the prior art (i.e., computers).

  98. Mr. McDonald:

    So you don’t think about portfolio management, assertion, and licensing.? You must be a prosecution attorney in a firm, then–get a patent for the client no matter how invaluable it is, bill my hours, and move on. Your choice–I did that for a while too, until it got boring.

    Regarding your manufacturer comment–New Flash: the receiver of a signal is not always the end-user. Don’t be a monkey–think about what you’re claiming.

    And lastly, I believe we all recall the days from grade school when the fellow student, depleted of all arguments and intelligence in a matter, resorts to their last pitiful attempt at redemption–name calling. Heck I did it! Fortunately, most of those kids grow up.

  99. Let’s lay on some irony and analyze a couple scenarios in a series of steps:

    1. Assume that A + B = C is formula (the “formula”).
    2. I do the formula in my head.
    3. I file a patent.
    4. I should get no patent because of non-statutory subject matter.

    Next example:
    1. Assume that A + B = C is formula (the “formula”).
    2. Further assume the formula is known.
    3. Now, I’m the first to implement a computer system to do the formula.
    4. I file a patent.
    5. Without something else, we should have an obvious patent. The formula is non-statutory subject matter. Adding the computer overcomes this issue. However, the computer doesn’t overcome the obviousness.

    Next example
    1. Assume that A + B = C is formula (the “formula”).
    2. Further assume the no one knows this formula.
    3. Now, I’m the first to implement a computer system to do the formula.
    4. I file a patent.
    5. Patent should issue. The formula is probably non-statutory subject matter. Adding a computer to the process escapes this issue. Since the formula wasn’t previously known, I don’t have an obviousness issue.

    Next example:
    1. Assume that A + B = C is formula (the “formula”).
    2. Further assume the formula is known, however, no one can figure out how to do B. The result C is theoretically shown to happen.
    3. Now, I’m the first to implement a computer system to do the formula sucessfully.
    4. I file a patent.
    5. Patent should issue. The formula is probably non-statutory subject matter. Adding a computer to the process escapes this issue. Further more, even though the formula was known, no one could implement it in anything, I don’t have an obviousness issue.

  100. “Think outside the box of patent procurement–think portfolio management, assertion, and licensing.”

    Ah, the true mark of a troll, how many people can I sue.

    I don’t want to have to go after the manufacturer, he may have enough at stake to actually try and defend himself. I need claims that I can use to go after the end user who will not have enough at stake and will gladly accept my offer of a license at an amount less than the cost of litigation.

  101. AgentG writes:

    … Limitations covering the signal features can simply be added to the device claims.

    And if the infringer doesn’t make, use, or sell the device, but instead only uses the signal? The advantage of a signal claim is that you can cover more than one perspective (i.e., infringer) with a single claim. Extremely important in view of the PTO’s recent 5/25 rulemaking.

    … I think this is a good decision, for no infringement on the signal could take place without a signal-generating device or process….

    First, see my point above. Second, justifying a decision that ignores “modern” (i.e., last century) physics theory and that, as an electrical engineer, I find to be quite embarrassing, with the rationale that “they could have claimed it this way or that way instead” missing the entire point of the discussion–whether a signal is patentable subject matter or not–and is unenlightening.

    … So I agree with Mooney (6:54) that Nuitjen could simply rephrase the claims in terms of a device / method…

    They did. Claim 1 was directed to a method; claim 11 to a system, claim 15 to a CRM. Again, that was not why they also added the signal claim. Think outside the box of patent procurement–think portfolio management, assertion, and licensing. It will make you a better prosecutor–if you ever return from the dark side, that is ;-)

  102. Alan and Lonnie: Your reasoning implies that NO computer software should be patentable. Is that what you really believe?

    I’ll take the simple route – YES!

  103. metoo:

    In regards to your question about the patentability of software:

    There is patentable software matter. I could spin out and give lots of examples about what might, and I emphasize might, be patentable, and what might not be patentable. May I provide the briefest of examples:

    Software that turns a spreadsheet, previously hand calculated, into a spreadsheet suitable for computer calculation should not be patentable, at least not broadly. On the other hand, if you create a technique to freeze an address, such as by using a $ sign in front of the column or row designation, that could be patentable matter. Freezing a column or a row so that they always appeared as you scrolled about a spreadsheet could be patentable.

    Fundamentally, using a computer to do something that has been previously done by some other technology, including humans, is not inherently patentable unless the technology brought new, non-obvious advances over the previous technology. We know computers can have databases, spreadsheets, calculations, decision trees, documents and pictures. Adapting these capabilities to analyze whether a painted picture is possibly a forgery should not be patentable UNLESS the computer method used a non-obvious feature to make that analysis.

    Before this explanation gets any more complicated, I better quit.

  104. re: Nuitjen

    In this context, if a signal is not a manufacture, then nothing is. A signal is precisely made by man, and as such that is it’s truest identity: “made by man”. The more precisely made, the greater the information content. The quanta that carry it have mass by virtue of their energy; and their physical interaction by the electroweak force has exactly the same character as the forces that provide form and structure to any object that one (or the Court!) has ever seen or touched.

  105. Alan and Lonnie: Your reasoning implies that NO computer software should be patentable. Is that what you really believe?

  106. Alan McDonald:

    I should have scrolled a little further before I wrote my previous post. What you said is my point. Languages are known. Creation of languages adapted to previous technologies is known (another one that comes to mind are naval flags on ships). Therefore, there is teaching to adapt human language to new forms of technology. An electromagnetic device that can actuate an electromagnet at a distance is invented. It seems like the next, highly obvious, step is to create a method of adapting that technology to transmit words or letters.

    Here is a parallel example that seems appropriate. If I was one of the first people to begin texting and instead of saying “How are you? Have you seen my best friend Katie today? She has a new boyfriend and he is too cool” I said “HRU HV U seen my BFF Katie 2day? She hs a new BF & he is 2kewl.” Is the “new” language patentable? Why not? Morse was.

    I like the whole “if it ain’t broke, don’t fix it” argument with respect to the USPTO. The problem is that the system was created broke and we have yet to figure out how to unbreak it. The good news is that we keep trying. The bad news is that not all the fixes lead to repairs.

  107. Erez Gur & those of you pointing to the patenting of Morse code:

    I fail to see Morse code being patentable, and I believe the Examiner erred. Semaphore existed more than 100 years before morse code, and created a visual equivalent of dots and dashes. Cuneiform is a more sophisticated set of lines depicting letters and words. All Morse did was adapt cuneiform and semaphore to the modern technology of electromagnetics. Morse may have been the first to see the ramifications of using electromagnetics as a method of communication (patentable), but adapting a previously known technique of communication (language in the form of semaphore or cuneiform) to the new technology seems unpatentable without the underlying technology.

  108. The Federal Circuit in Comiskey has unfortunately used the term “unpatentable” in a manner that causes confusion as to whether they mean 101 or 103. My view is that they mean 101, not 103, given the context. Also, if Comiskey stands for the proposition that the “nonstatutory” component is to be ignored in the 103 analysis, the Federal Circuit resurrects the unfortunate rhetorical nonsense that the Supreme Court espoused in Flook which treated what even they acknowledged as the “novel and useful” as “though it were a familiar part of the prior art.” What Comiskey may suggest and what the Supreme Court said in Flook is in direct conflict with what 103 says. Under 103, the “prior art” must at least be “known” to someone and if it is not, then it should not be treated as the “prior art” whether or not it qualifies as statutory subject matter. This also isn’t new as it goes back to the Eibel Process case in the 1800s which recognized that understanding (and applying) the laws of nature that others did not could lead to a patentable invention. (And if you want to see a really screwed up view of how software works, read the Supreme Court majority opinion in Microsoft v AT&T which most software developers would find bizarre; dissenting Judge Stevens is the only one who got it right on how software really works).

    With regard to Nuitjen, I side with Judge Linn. The Supreme Court majority in Chakrabarty (admittedly a slim majority) said that 101 subject matter should be construed broadly. In fact, what the majority says is in scientific conflict with what Einstein got the Nobel Prize for, namely the photoelelectric effect. What I sense in the majority opinion is the fear and backlash from the pasting the Federal Circuit has gotten from the Supreme Court recently, and almost got again in the Metabolite case. In fact, I cringe every time the Supreme Court asks the U.S. Solicitor General whether they should review a patent case from the Federal Circuit, and the Solicitor General says yes. With the Supreme Court on the rampage in the patent area, the PTO promulgating multitudes of burdensome, ill-advised, widely opposed, and (and as the Tafas correctly alleges in the case of the limations continuations-claims, in violation of the APA and RFA) Rule packages, and now Congress getting into the act with Patent Law Reform (or as some have accurately said Patent Law Deform), this has been a really bad year for the U.S. Patent System. I just hope and pray the U.S. doesn’t completely lose whatever competitive advantage it still has in innovation because of all this adverse reaction to patents. Sure, some of the excesses needed to be curbed (and have, in my opinion, been grossly overexaggerated), but what I see now brings back chilling memories of the late 60′s and early to mid-70′s (may be we’ll see a return of the “Nine Licensing No’s No’s, God truly help us).

  109. Erez Gur said:
    it seems to me that Nuijten could have rephrased his claims as device/method to generate the signals he wanted to patent. Inelegant perhaps (like Swiss style claims), but such claims would neutralize the ill-effects of the CAFC decision.

    Unfortunately, I can’t seem to find a copy of the original Nuijten application to see why such a method/device was not claimed.
    —-

    And AgentG said:
    Limitations covering the signal features can simply be added to the device claims. I think this is a good decision, for no infringement on the signal could take place without a signal-generating device or process.
    —-

    Nuijten did in fact obtain allowance of claims to the method, to the arrangement (i.e. apparatus) and to the storage medium with the signal stored thereon. Where these claims fall short, however, is where the apparatus and method are outside the US and the signal is all that enters the patented territory. So a provider of streaming audio from abroad, watermarked with Nuijten’s method, would not infringe such claims.

  110. Regarding computer-based method claims:

    “This case calls into question the validity of every claim which begins with “A computer implemented method…” – if all of the steps can be done in someone’s head, Comiskey says that claim is invalid (since I’m not sure how you could ever overcome prima facie obviousness given that Comiskey says the only relevant issue is the obviousness of adding the use of a computer)”

    I have argued for 15 years that this should be the law and that NO claim should EVER be allowed for an “invention” that could be accomplished by a football field full of people grinding out the numbers just because it is being accomplished by a computer and thus done quicker.

    Regarding “signal” claims:

    I’m probably talking off the top of my head on this one because I don’t practice in the electrical fields but,

    Creating a signal is old. Any specific signal is created by a specific algorythm, which, as above, is an unpatentable mental step. Therefore, all signal claims must be unpatentable.

  111. Someone above said that something that they can carry out in their head should always be obvious. Consider: Does that mean that you think that every physical process that you could carry out without the aid of a machine should be obvious? Some of the most cited cases on physical methods can be carried out without the aid of a machine. Deener for example. Further, consider that every process on a computer COULD be carried out in your head. You could go through every single fetch-execute cycle in your head.

    Chisum wrote a lengthy article criticizing Benson. What is a mathematical algorithm? You see, at the time Benson was written the author of Benson thought of computers as implementing mathematical algorithms to solve problems.
    It was the era of Fortran. Is scanning in a x-ray and detecting a tumor a mathematical algorithm? Is the architecture of a web browser and the Internet obvious? Why did it take so long for someone to come up with the idea of a web browser? Why is it so hard to detect objects with a computer? What is a mathematical algorithm? The fact is that we represent information and then perform a process on the representation. Math is an abstraction. In a computer it takes physical space to represent a number and the size of number is limited. A computer is a machine that burns electricity, generates heat, moves representations from one physical location to another physical location. There are not abstractions. The devil is in writing claims that do not clearly state how one is going to represent arbitration. The abstraction is in the human words. We need to dig into what actually is going to be represented and how and then what process is going to be performed on the represented information.

    You see the computer is not an abstraction. It is a machine with parts so tiny we can’t see them. Consider, that information theory is as rich and important as biology, chemistry, or physics.

    The problem with understanding computers is that they are information processors and they challenge us to understand ourselves.

    Flook and Benson are medieval in their thinking about computers.

    Consider too that the problems that are raised by the computer come up with physical processes to. What if a patent said “separating each oxygen atom from hydrogen atom.” We can all imagine doing this, but is there actually a machine to accomplish this or a process to accomplish this?
    The problem is very similar to claiming representing arbitration on a computer. The issue is what exactly have you represented and what computation are you actually accomplishing. Digging into these details is where patents should be issued, because actually being able to arbitrate with the aid of a computer would be something.

    The devil is in the details. We don’t need 101—112, 102, and 103 are all we need. We need to understand information processors and the problems associated with accomplishing tasks with information processors.

    Solving some of the issues associated with representing an arbitration is worthy of patent protection. The fact is that getting machines (the information processor) to accomplish tasks previously performed by humans is the big trend. And, there is a lot of work to get that done. The patent in question is a bit like “a motor attached to a frame with wheels.” There is not a lot of structure. But, a computer implemented process to actually perform arbitration would be rich in details in what can be represented and how to represent the details and how to process the details.

    Finally, consider how strange some of the writing is above and in the opinions of Supreme Court. Is some of this indignation? Some of the writing sounds almost like the Judges/Justices believe that magic goes on in their heads when they think. A computer challenging human intelligence? Also, consider that just because the PTO hasn’t gotten their arms around software yet, doesn’t mean that they shouldn’t be tasked to get their arms around the problem now.

  112. Viewing this from the other side of the Atlantic, could it be that we see signs of convergence between the Old World and the New?

    The recitation of any statutory subject matter in a claim avoids any holding that the claim as a whole is non-statutory, but claim elements that define non-statutory subject matter are considered de facto obvious? Compare with EPO Board of Appeal decisions: reciting computer hardware avoids any statutory exclusion of computer program or business method elements, but excluded/non-statutory elements are not considered in assessing obviousness/inventive step.

    Of course, at the EPO “technical” is king: “[an] invention will be assessed with respect to the requirement of inventive step by taking account of only those features which contribute to a technical character”. Comiskey would be refused by the EPO on basically the same grounds as here. The abstract method claims are non-statutory/excluded subject matter. The claims that add trivial hardware elements are obvious because the non-statutory/excluded elements are omitted from the analysis of obviousness.

    In the EPO, a claim to a combination of “standard” hardware and “novel” computer program elements can be allowable if the combination results in a new and non-obvious “technical effect”. The same reasoning would distinguish Comiskey from, say, the Google patent referred to above. Of course the Comiskey ruling doesn’t address that point, but it seems likely that a similar conclusion would be reached by a US court (it would likely be expressed differently).

    RE: “if anyone here lives near Greg A., they might want to drop by his place with a six pack or something else of a calming, medicinal nature” – I don’t think beer will be enough, class A opiates are indicated.

    RE: “One might note how absurd it is to bring up the founders of the constitution when I doubt any of them could have comprehended represented information and processors.” Two words: Benjamin Franklin.

  113. “Malcolm, you continue to amaze me…you act like I said something incorrect and take me to task, yet in the end you agree with me.”

    Which part is amazing? ;)

  114. Regarding Nuitjen, note that there is no way that a novel or non-obvious signal could exist *without* the device or apparatus that created the signal (except for telepathic brain waves). Limitations covering the signal features can simply be added to the device claims. I think this is a good decision, for no infringement on the signal could take place without a signal-generating device or process. Perhaps it gets more complicated when we consider signals generated through the combination of other signals that are not novel and are obvious…but this suggests we are dealing with inherent properties of matter/waves that would be non-statutory.
    So I agree with Mooney (6:54) that Nuitjen could simply rephrase the claims in terms of a device / method.

    Now this opens another can of worms, what about devices that can generate different kinds of signals: infringing and non-infringing (device / method of course) ? Are they barred from operating in infringing mode only? What if the same signal was generated by another algorithm, that could be shown to be novel and non-obvious? What if there were two conflicting devices / methods, each having novel and non-obvious features, which resulted in the same signal? This just simply shows that there may be some practical benefit to having the signal itself be patentable.

    Getting off topic (rant ON), all indicators point to a great deal more diligence and skill that will be required of the prosecutor than is currently the norm. As a former prosecutor, I now work as a PCT Search Professional (read: outsourced patent examiner), and I can tell you that a *substantial* majority of patent prosecutors are grossly negligent in their duties and are in *many* cases responsible for the loss of viable IP rights that would have otherwise been awarded their clients. I mean, this is a much bigger problem than 101 or 103 issues. You simply cannot imagine the extent of the negligence in basic practices we see filed on a daily basis. Dennis has attributed this to the erosion of fees paid for preparing a patent, but I respectfully submit that the patent bar has done an extremely poor job of maintaining a standard of quality among its members. In part, this has to do with changes in infringable claim language over the years, but many older attorneys are apparently too stuck in their ways to modernize their claim drafting skills. Many patents are filed without even a cursory review of the claims for the most basic errors. Furthermore, there is still a *substantial* number of members of the patent bar who believe citing prior art in the patent, and incorporating these by reference, protects them from having this prior art cited against them. Another astonishing percentage of attys/agents cannot resist the temptation to characterize the teachings of the prior art, which they invariably fail to correctly do. Finally, at what point are practitioners bound to represent the best interest of the client by refraining from filing claims that are clearly not-inventive to any passing bystander, rather than cleverly renaming terms for obscurity and citing all the prior art they know, except of course the relevant ones they are trying to claim around. I think the IPLA has some serious growing up to do. Rant OFF.

  115. I have taken a much more careful look at the Comiskey opinion. With all due respect to Dennis, this is the first time I disagree with him.

    When the court states, “The routine addition of modern electronics to an otherwise unpatentable invention typically creates a prima facie case of obviousness. Moreover, there is no pertinent evidence of secondary considerations because the only evidence offered is of long-felt need for the unpatentable mental process itself, not long-felt need for the combination of the mental process and a modern communication device or computer.”

    I don’t think the court is really implying, “The implicit holdings here: (1) evidence of secondary considerations do not apply to portions of an invention that are not considered “patentable subject matter;” and (2) during nonobviousness analysis, any portion of an invention that constitutes nonstatutory subject matter will be considered de facto obvious.”

    When the court said “unpatentable” invention, I think they meant due to 103 (not 101). The PTO and Board had already previously determined that claim 1 was obvious and hence unpatentable. I actually think the Board intentionally wanted to avoid the issue of determining whether a claim to a nonobvious algorithm would be statutory simply by adding a machine, hence the remand. They also felt it only fair to allow the applicant to amend claim 1 to be statutory.

    I doubt the CAFC would want to address the statutoriness (hey, we are allowed to make up words!) of software patents unless they were forced to.

  116. Dennis writes, “(2) during nonobviousness analysis, any portion of an invention that constitutes nonstatutory subject matter will be considered de facto obvious.”

    Does this mean that software is no longer patentable??? I may need a new job…

  117. RE: “Composition of Matter: A transient electric signal is not a “chemical union, nor a gas, fluid, powder, or solid.” Therefore, a signal is not a composition of matter.”

    Albert Einstein, 1905:
    E = mc², energy and mass are equivalent and transmutable

    Judge Gajarsa, on behalf of the CAFC, 2007:
    “We recognize the wave-particle duality as applied to electromagnetic energy. However, the fact that photons traveling at or near the speed of light behave in some ways like particles does not make them tangible articles.” Nuijten at n8.

    Gajarsa is really saying: ‘We’ve heard of Einstein et al. (because we have 5 judges with technical backgrounds), but we can’t imagine how anyone could divide by a square root.’

  118. Malcolm, you continue to amaze me…you act like I said something incorrect and take me to task, yet in the end you agree with me. I never once suggested that an obvious series of mathematical steps should be patentable simply by performing them with a computer

    SF, I think the opinion is very carefully worded in that it says “routine addition of modern electronics to an otherwise UNPATENTABLE invention typically creates a prima facie case of obviousnesss.” Replace the word “unpatentable” with the word “OBVIOUS” and there’s nothing all that unusual here on the question of obviousness. And I’m not so sure it’s dicta, since the end of the opinion states: “we remand to the PTO to determine in the first instance whether the addition of general purpose computers or modern communication devices to Comiskey’s otherwise unpatentable mental process would have been non-obvious to a person of ordinary skill in the art.”

  119. Dennis’ comment:
    Comiskey appear to reinstate something akin to the USPTO’s ‘technological arts’ requirement that had been eliminated by the Lundgren decision. For Comiskey, recitation of a microprocessor as a limitation of the claims was sufficient to overcome the patentable subject matter issue. Notably, this is a rule of formality that, in most instances, can be followed without substantively reducing claim scope. Under Comiskey, there is no requirement that the technical link be something novel or non-obvious.
    <<

    I agree.

  120. I agree with the above person who yawned.

    This is just the CAFC saying that the subject matter of a patent must involve an application of technology. That’s what patents are all about, folks, advancing the “useful arts”.

    Business methods which involve an application of technology to solve a business problem are still patentable (so long as they are novel and non-obvious). “Pure business methods” such as methods of arbitrating disputes are not. That’s the way it should be.

  121. The non-statutory mental step was put in place to prevent a mental step from being added to a method. (need the case cite). It is related to 112.

    These opinions are just sad. I wish Judge Rich were still alive.

  122. For the record, I note that this is one instance (e.g., my 7:09 pm post) where I believe certain things should be patentable that the Supremes do not.

    Just sayin’.

  123. Parker v. Flook (hat tip to Steck)

    “Respondent’s process is unpatentable under §101 not because it contains a mathematical algorithm as one component, but because once that algorithm is assumed to be within the prior art, the application, considered as a whole, contains no patentable invention.”

    Ah yes. Parker v. Flook. Forgot about that one. As SF points out, that case would preclude my strategy for finding patentable claims to computers running software which execute “novel non-obvious” algorithms. Computers are old. Software is old. New algorithms can’t make them patentable, just as the point of novelty in a method claim can’t be a recited “mental step.”

    But Comiskey doesn’t add anything new to THAT particular question, does it? Rather, it merely affirms Parker v. Flook (and probably contradicts one of those other poorly written Supreme Court cases on Section 101) and begs the question: how did patents like that Google patent referred to above ever get out the door in the first place?

  124. metoo wrote, “Yet, the court ruled that because the ‘mental process’ was ‘unpatentable’, the obviousness of a claim which simply adds a computer to that ‘mental process’ hinges on whether or not the addition of the computer was unobvious.”

    I think metoo makes an interesting interpretation of this case. The panel may be saying that a claim to a computer-implemented “mental process” may be obvious if it is obvious to add the computer to the non-statutory-eligible “mental process” — regardless of whether it was novel or non-obvious to perform the non-statutory-eligible “mental process.”

    However, I don’t think that was what the panel was saying — although the language is ambiguous. I think the panel was saying that a claim to a computer-implemented “mental process” may be obvious if (1) it is obvious to add the computer to the non-statutory-eligible “mental process” and (2) the non-statutory-eligible “mental process” itself was obvious. Remember that the trial court said that the non-statutory-eligible “mental process” was obvious.

    I think Malcolm took the latter interpretation (which assumed the non-statutory-eligible mental process itself was obvious), when he wrote, “Good. If I can do something obvious with my damn brain, then why should I get a patent on it just because a computer is doing that thing?”

    In any event, this passage of dicta in the opinion is so poorly worded that I hope that the panel issues a clarification or just deletes the passage altogether.

  125. Dennis notes the court’s implicit holding that “any portion of an invention that constitutes nonstatutory subject matter will be considered de facto obvious.”

    This has nominally been the law ever since Parker v. Flook, in which the Supreme Court offered this analysis:

    “For the purpose of our analysis, we assume that respondent’s formula is novel and useful and that he discovered it;” however, “the novelty of the mathematical algorithm is not a determining factor at all.” Instead, “the algorithm … is treated as though it were a familiar part of the prior art.” Thus, “Respondent’s process is unpatentable under §101 not because it contains a mathematical algorithm as one component, but because once that algorithm is assumed to be within the prior art, the application, considered as a whole, contains no patentable invention.”

  126. “This case calls into question the validity of every claim which begins with “A computer implemented method…” – if all of the steps can be done in someone’s head”

    Good. If I can do something obvious with my damn brain, then why should I get a patent on it just because a computer is doing that thing? The answer is that I shouldn’t. Again, this is in the MPEP. Old news. Old law.

    “all of the steps in this claim can be done in your head (perhaps with a pen and paper close by).”

    Well, geez, metoo, which is it? Can you do it in your head or not? Can anyone? Does Rain Man count?

    Regardless, I believe that the issue should boil down to whether the recited series of mathematical steps being carried out is an *obvious* series of steps or not. If the functions themselves and their arrangements are routine then merely performing them on a computer should not be patentable. OF COURSE THEY SHOULD NOT BE PATENTABLE. The only exception would be if there was tons of teaching away in the art or a surprising result.

    We all know what the real problem is so let’s just admit it. The real problem is that people didn’t start earnestly trying to patent all this computer crap until relatively recently and the PTO has never really managed to assemble a decent database of prior art or a set of Examiners to rigorously apply it. In other words, there was a weak spot in the system and some “clever” opportunists exploited it to the glee of investors everywhere until the tragedy of the anticommons whereupon we all found ourselves …

    [microphone cut off]

  127. I don’t understand why some are gleeful at the Nuijten decision. There is no objective reason that signals should not be patentable (assuming novelty and non-obviousness).

    That aside, without having studied the CAFC decision yet it seems to me that Nuijten could have rephrased his claims as device/method to generate the signals he wanted to patent. Inelegant perhaps (like Swiss style claims), but such claims would neutralize the ill-effects of the CAFC decision.

    Unfortunately, I can’t seem to find a copy of the original Nuijten application to see why such a method/device was not claimed. I’d appreciate it if someone could post a URL.

  128. “their decision was not that adding a computer to an obvious method does not result in something patentable.”

    I agree with the above commenter who fails to see anything terribly earth-shattering about what this decision does not say.

    Adding a computer to an obvious method is mostly likely going to be obvious unless there is teaching away from use of a computer or it achieves a surprising result.

    (yawn)

    That would likely require the claim to also recite some really brilliantly written software, with specificity. How many of these junk patents do that? Answer: very very few.

  129. “Malcolm, that passage of text you wrote also fails the utility test.”

    No, it’s entertaining and educational. Kind of like a game.

  130. This case calls into question the validity of every claim which begins with “A computer implemented method…” – if all of the steps can be done in someone’s head, Comiskey says that claim is invalid (since I’m not sure how you could ever overcome prima facie obviousness given that Comiskey says the only relevant issue is the obviousness of adding the use of a computer)

  131. But they did not determine that anything was obvious! In other words, their decision was not that adding a computer to an obvious method does not result in something patentable.

    Check out this claim from a randomly chosen patent owned by Google (7,158,961):
    1. A computer-implemented method for generating a compact representation of a first object, comprising: (a) identifying a set of features corresponding to the first object; (b) generating for each feature a hashing vector having n coordinates; (c) summing the hashing vectors to obtain a summed vector; and (d) creating an nx-bit representation of the summed vector by calculating an x-bit value for each coordinate of the summed vector, the nx-bit representation of the summed vector defining the compact representation of the first object.

    Now, all of the steps in this claim can be done in your head (perhaps with a pen and paper close by). According to Comiskey, this claim is obvious since the steps are “unpatentable subject matter” and simply adding a computer is an obvious addition.

  132. I don’t think I see this as earth-shattering as metoo does.

    What can be said about this case:
    1. That the court isn’t going to like the idea of a patent covering a process that can be performed solely in the brain. This looks and sounds a lot like the idea that you can’t patent an algorithm per se or a mathematical formula. So yeah, e=mc^2 might not have been obvious, but you still don’t get a patent on it.

    2. Taking something that’s “obvious” and tacking on a computer isn’t going to make it nonobvious without something more. Well, “duh.”

    I say, big deal to all of this.

  133. While this gem pales by comparison to what I addressed above, the Comiskey decision includes more hilarity. They first said this:
    “The very constitutional provision that authorized Congress to create a patent system, Article I, § 8, also limited the subject matter eligible for patent protection to the “useful arts.” According to the Supreme Court, this constitutional limitation on patentability “was written against the backdrop of the [English] practices—eventually curtailed by the Statute of Monopolies—of the Crown in granting monopolies to court favorites in goods or businesses which had long before been enjoyed by the public.” Graham, 383 U.S. at 5. In the 16th and 17th centuries, the English Crown granted monopolies over entire types of business to specific individuals, for example the grant by James I to Darcy in 1600 of the exclusive right to manufacture or sell playing cards or the exclusive right to the printing business held by the London guild of booksellers and printers…The purpose of such monopolies “was to enrich the King . . . as well as the grantee, at the expense of the community.” Meinhardt, supra, at 31.” OK, nothing wrong with that passage.

    But then they conclude with this: “With this background in mind, the framers consciously acted to bar Congress from granting letters patent in particular types of business.”

    WHAT? “Particular types of business”? Pray tell, what types were those? No, the framers wanted to prohibit the granting of patents for things which were already known. They wanted patents to promote progress, and therefore required novelty and utility. It had nothing whatsoever to do with barring Congress from granting patents “in particular types of business.”

  134. Dennis said: “Under Comiskey, there is no requirement that the technical link be something novel or non-obvious. Rather, the question of patentable subject matter is entirely separable from those of novelty and non-obviousness.”

    I’m not so sure that’s what the CAFC said in Comiskey. In Comiskey, the court said that claims 1 and 32 were not patentable subject matter because they “claim the mental process of resolving a legal dispute between two parties by the decision of a human arbitrator.” Technically, that’s not correct, since these claims did not specifically require the performance of a series of mental processes alone. Rather, they were written so broadly that their scope would encompass a series of mental processes without the use of a computer (or other machine). Let’s not nitpick too much when there are far bigger problems in this opinion.

    What the court did NOT look at was whether or not claims 1 and 32 were indeed obvious, as determined by the BPAI. The CAFC said: “We do not reach the Board’s obviousness rejection of the independent claims under § 103 because we conclude that Comiskey’s independent claims 1 and 32 and most of their dependent claims are unpatentable subject matter under 35 U.S.C. § 101.” Again, the CAFC did NOT make ANY determination with respect to the obviousness of claims 1 and 32 – NONE.

    For the other independent claims, 17 and 46, the court determined that these claims were written such that they required the use of a machine – i.e., a computer. Because of this, the CAFC determined that these claims were directed to patentable subject matter. BUT, and this is a HUGE BUT, the Comiskey court then drops a BOMBSHELL.

    First, the opinion says: “While independent claims 17 and 46 and dependent claims 15, 30, 44, and 58 claim patentable subject matter under § 101, the other requirements for patentability, including non-obviousness, must still be satisfied.” That is indeed correct. Here it comes: “Here, claims 17 and 46 at most merely add a modern general purpose computer to an otherwise unpatentable mental process and claims 15, 30, 44, and 48 merely add modern communication devices. The routine addition of modern electronics to an otherwise unpatentable invention typically creates a prima facie case of obviousness. Moreover, there is no pertinent evidence of secondary considerations because the only evidence offered is of long-felt need for the unpatentable mental process itself, not long-felt need for the combination of the mental process and a modern communication device or computer.” They conclude with: “we remand to the PTO to determine in the first instance whether the addition of general purpose computers or modern communication devices to Comiskey’s otherwise unpatentable mental process would have been non-obvious to a person of ordinary skill in the art.”

    HOLY SMOKES! The court only determined that the “mental process” was unpatentable on subject matter grounds (35 USC 101), NOT novelty or obviousness. Yet, the court ruled that because the “mental process” was “unpatentable”, the obviousness of a claim which simply adds a computer to that “mental process” hinges on whether or not the addition of the computer was unobvious. Remember, the CAFC never even looked at whether or not the “mental process” was obvious. So, when they say “unpatentable mental process”, they mean unpatentable on SUBJECT MATTER GROUNDS! Heck, they even go so far as to say that evidence of secondary considerations of non-obviousness must be related to the addition of the computer, NOT the “unpatentable mental process.”

    Not to repeat myself, but HOLY SMOKES! Better yet, what were these three smoking when they wrote this?

  135. “The CAFC, of course, does not overrule Morse, nor does it adequately explain how Morse’s patent would fit within our modern conception of the four categories.”

    I agree that it would have been nice to see deal with this. But ultimately … big whup. I don’t think any of the Supremes will raise an eyebrow but if this case doesn’t get appealed you may be able to hear nine sighs of relief.

    By the way, Dennis, thanks for the case links.

  136. “If a something is “man-made”, “physical”, “real”, “perceptible” and made up of “particles”, then clearly it is a “manufacture.”

    Yeah, like the light waves from your screen right now carrying this novel and non-obvious passage of text I just wrote. BLBLBLLBLBLLB!!!!! I should be able to patent it and shut you all down. Right?

    Seriously, though, we’ve been over all this before. Comiskey is the more interesting case.

  137. “Benson, Flook, etc. this entire line of cases simple misunderstand computers and algorithms.”

    Actually I think it’s more like computer geeks being unable to grok judicial realism.

  138. “Obviously someone wasn’t paying attention in quantum mechanics class. ALL mater appears to behave as either ”

    Zzzzzzzzzzzzzzzzzzzz

  139. I can feel the spittle of rage from Greg A. over at PatNews even from across the continent. And no, dude, this does not mean you can still plan on patenting movies or story lines.

  140. I like how they addressed Morse’s claim 5 in a footnote. Morse’s claim 5 recites “I claim as my invention the system of signs consisting of dots, spaces, and horizontal lines for nummerals, letters, words, or sentences substantially as herein setforth and illustrated for telegraph purposes.”

    If this is a “process,” where is the act or series of steps in this claim?

  141. What rot has come back to haunt us. These are twisted opinions with no firm foundation. Benson has been discreded in many academic jornal articles as self contradictory and frankly just bizarre.

    “Patenting human intelligence”? What rot. The basic principle of the computer is that it works on represented information. The issue should be that any process that works on this represented information should be eligible for a patent. We should then use the standard of novel, useful, and non-obvious to select which of the processes to grant a patent.

    Benson, Flook, etc. this entire line of cases simple misunderstand computers and algorithms. The issue for business processes should be one of one under 112. What is the definition of income? What is the definition of a arbitration or differences? These are enablement issues and not 101 issues.

    What this is all about is destroying patents for some big businesses just as anti-trust law has been neutored to suit the interests of big businesses. I will bet that ole Dickie and “W” have been lobbying hard for these changes.

    What a shame that as we enter an age when all of human invention will likely be accomplished with a computer,and yet in the interests of a few large corporations we are not going to take the time to understand the information processor.

    One might note how absurd it is to bring up the founders of the constitution when I doubt any of them could have comprehended represented information and processors. We grant patents for physical processes that could be carried out by humans.

    Well, this is a much larger topic for an article and not a comment.

  142. So the majority says that the claimed signal is “physical and real” and is “man-made” – but it’s not a “manufacture.”

    Their explanation is that the definition of the verb “manufacture” is to make “articles,” and therefore the meaning of the noun “manufacture” is a man-made “article.” So then we have to determine the meaning of the word “article” – according to the majority, an “article” is a “particular substance of commodity.” (And all these definitions are coming from a dictionary published in 1895!) Then, the majority takes their first leap off the cliff: in view of this string of definitions, an “article of manufacture” is a “tangible article or commodity.” Where the “tangible” came from in the string of definitions is anybody’s guess. But, even though the majority says that the electromagnetic signal is “physical and real”, is made up of particles (yes, they said this), has “tangible causes and effects,” and is perceptible – it’s still not “tangible.”

    And the hilarity reaches a peak with this: “All signals within the scope of the claim do not themselves comprise some tangible article or commodity. This is particularly true when the signal is encoded on an electromagnetic carrier and transmitted through a vacuum — a medium that, by definition, is devoid of matter.” Good grief. An electromagnetic wave (which is what they are talking about) consists of photons – which they already agreed are particles. But, according to the majority, if you transmit that electromagnetic wave through a vacuum which is completely devoid of matter (i.e., an absolute vacuum), that electromagnetic wave cannot be tangible since the vacuum is, by definition, “completely devoid of matter.” Um….what the hell happened to the photon particles they agreed were there?

    Look, we can certainly debate whether or not “signals” should be patentable subject matter. However, the reasoning of the majority in deciding they are not patentable subject matter is downright embarrassing. If a something is “man-made”, “physical”, “real”, “perceptible” and made up of “particles”, then clearly it is a “manufacture.”

    And look out – the majority’s use of the word “transitory” and similar language could spell trouble down the road.

  143. Said the court: “We recognize the wave-particle duality as applied to electromagnetic energy. However, the fact that photons traveling at or near the speed of light behave in some ways like particles does not make them tangible articles.”

    “Sigh”

    Obviously someone wasn’t paying attention in quantum mechanics class. ALL mater appears to behave as either a wave OR a particle depending upon how it is observed.

  144. It is about time! I know prosecutors are supposed to think everything should be patentable, but we have gone off the deep end with the kind of crap we’re issuing patents on. I hope this really is a change of direction in US law.

  145. By the way, if anyone here lives near Greg A., they might want to drop by his place with a six pack or something else of a calming, medicinal nature.

  146. “I’m wondering if Malcolm has a mole at the Federal Circuit. ”

    You don’t need a weatherman to know which way the wind blows.

    /dylan off

    That “dicta” is in the MPEP too, btw, and is well-grounded case law. It was a combination of misplaced reliance on the strict TSM test, poor searching by the USPTO, and dust-kicking by applicants that impeded proper Examination (and rejection) of thousands of patent claims reciting computer-implemented versions of old “technology.”

  147. In response to another post, Malcolm Mooney criticized pre-KSR arguments and gave the following examples: “Sure, there were lottery-type contests based on numbers printed on packages in the past. But ours using a computer!!!” and “Sure, people recorded customer information based on their purchases in the past. But our invention uses a computer instead of paper!”

    I’m wondering if Malcolm has a mole at the Federal Circuit. In dicta, this panel stated, “Here, claims 17 and 46 at most merely add a modern general purpose computer to an otherwise unpatentable mental process and claims 15, 30, 44, and 48 merely add modern communication devices. The routine addition of modern electronics to an otherwise unpatentable invention typically creates a prima facie case of obviousness. … Thus, it may be that these claims are unpatentable as obvious under § 103. However, we do not now decide this issue.”

  148. Ok, I see KSR, I see the PTO’s new rules, I see Leibel, I see the new House Bill, I see McKesson, and I see these cases. Seagate is a lone ray of light, but it’s fairly dim and shines only on litigators.

    Did someone forget to make the ritual sacrifice to the patent prosecution gods this year?

  149. The Linn dissent in Nuitjen is lengthy and raises (sub-)issues not addressed by the majority. En banc? Or is 101 the new “panel dependent” issue?

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