Ex Parte Bilski: Briefing Round I

As requested by the CAFC, both the PTO and Bilski’s attorneys (the Webb Firm) simultaneously filed briefs addressing the en banc that probe the scope of patent-eligible subject under 35 U.S.C. § 101. The Bilski facts focus on the patentability of a method of managing risk that is not tied to any particular form of technology. More generally, the CAFC appears prepared to reevaluate its decade-old State Street Bank decision.

A bevy of amici briefs are expected to be filed in early April.

59 thoughts on “Ex Parte Bilski: Briefing Round I

  1. Mr. Slonecker,

    You don’t see the issue because you do not realize how falsely SS and ATT have been misconstrued by so many parties. Currently, they feel that a dissembodied method not tied to transforming anything or a procedure executed by a machine to do something etc. is eligable under 101. They feel that because it is a “process” and because it is not a “law of nature, natrual phenomena (which it arguably is), or abstract idea” and because it produces “a useful, concrete, and tangible result” (presumably the protection of consumers and providers expenditures/incomes, as well as producing a “sale”). Summed up by the applicants we have “Bilski’s claim sets for th patentable subject matter because it does not claim an idea itself and is directed to a practical end as consistent with the requirements of the Benson, Flook and Diehr decisions of SCOTUS” Trust me, the dozens of pages of explanation filed by the board should be aplenty for the CAFC to consider sufficient to justify clarifying this issue for sorely mistaken applicants which are, right now, largely let slip through with this type of claim structure.

    Don’t worry, just as me and an associate here at the office discussed, there will be a decision on this subject soon, and many claims on my docket will disappear in a flash of 101 smoke.

  2. SF,

    “I think it’s because the policy issues have been hashed and re-hashed and because everyone knows that Feds are going to scale back 101 subject matter to exclude the claim at issue. The only real interesting question is how they’re going to do it, but that’s so speculative that just about any other topic would make for a more productive thread.”

    Perhaps I miscontstrue the issue, but it is my understanding that the claims in Bilski et. al are a step beyond what is presently recognized under 101. Here the claims are to a “business method” per se, without any claim limitations reciting apparatus for performing the method. Bilski et. al is advancing an argument that uses the term “process” in a generic sense (i.e., the performance of a series of steps), versus the more limited construction accorded to the term by present day jurisprudence.

    Personally, I do not see Bilski et. al as a case for scaling back the reach of 101, but as a case to explore the pros and cons of extending 101 to embrace additional subject matter. This is clearly an issue of importance to the development of patent law, and to turn the thread into yet another discussion concerning prosecution misses an excellent opportunity to engage in a truly worthwhile debate about basic patent law principles.

  3. “Is it really that difficult to stay on topic, or is it that the topic is not deemed important enought to discuss in a thoughtful manner addressing the pros and cons of interpreting 101 more broadly that has hitherto been the case?”

    I think it’s because the policy issues have been hashed and re-hashed and because everyone knows that Feds are going to scale back 101 subject matter to exclude the claim at issue. The only real interesting question is how they’re going to do it, but that’s so speculative that just about any other topic would make for a more productive thread.

  4. “Oh and hey JD, let’s understand something, the process is this:

    1. examiners find facts and apply them any way they can.
    2. case is appealed to board, board determines if the facts found are good enough for them to rely on as evidence submitted for the coming appeal “trial” at CAFC. To my knowledge neither the board nor examiners are courts, and need not rely only on “evidence” per se to make a rejection, and instead rely solely on “facts”. But perhaps you can point me to where it says it must. To my knowledge, the statute says that the claim must be obvious, and the only time you’re going to get a legal determination is in court (same as in any other government agency process, or is the IRS now trying people for avoiding taxes and sending them to jail? No?), not from an examiner nor an exalted examiner i.e. board member.
    3. Case goes to “trial” at the CAFC where the CAFC decides if the Board made the right decision to rely on the facts found as evidence.”

    Again, you clearly don’t understand what you are talking about. An appeal is not a trial (even giving you the benefit of the doubt that you put “trial” in quotation marks).

    So no, we’re not going to “understand something” until you get the basics down. Basics being the APA, the difference between an ex parte process and an inter partes process, the difference between trial courts as finders of fact and law, and appellate courts as reviewers of those findings, and the different standards of review that are applied to findings of fact and law. These things are covered in courses in law school. Courses like civil procedure, administrative law, evidence, etc.

    You would get a much better understanding of these concepts if you just simply went to law school. I’m sure Dennis can put in a good word for you with the admissions at Mizzou.

    “Oh and JD, it’s a shame there don’t appear to be any openings at your firm currently :( you guys do update your site regularly right?”

    Sorry 6k, we do not hire associates, except in very rare circumstances. Somebody else is going to have to experience the pain (pleasure?) of deprogramming you. :-)

  5. Fine fine M. Though in contrast I lament the fact that a case as on it’s face begging to be smacked down as Bilski is has drawn so much attention when the issue is clear cut and there is only one way the decision will go. Care to make a wager?

  6. Oh and hey JD, let’s understand something, the process is this:

    1. examiners find facts and apply them any way they can.
    2. case is appealed to board, board determines if the facts found are good enough for them to rely on as evidence submitted for the coming appeal “trial” at CAFC. To my knowledge neither the board nor examiners are courts, and need not rely only on “evidence” per se to make a rejection, and instead rely solely on “facts”. But perhaps you can point me to where it says it must. To my knowledge, the statute says that the claim must be obvious, and the only time you’re going to get a legal determination is in court (same as in any other government agency process, or is the IRS now trying people for avoiding taxes and sending them to jail? No?), not from an examiner nor an exalted examiner i.e. board member.
    3. Case goes to “trial” at the CAFC where the CAFC decides if the Board made the right decision to rely on the facts found as evidence.

    The Brand case above highlights the differences in different procedures, but also highlights the fact that what the new office policy on Off notice is reflecting is still up the air.

  7. I lament the fact that an article on a case dealing with 101 and what should be embraced within its scope has once more been hijacked and turned into yet another unrelated series of comments concerning prosecution.

    Is it really that difficult to stay on topic, or is it that the topic is not deemed important enought to discuss in a thoughtful manner addressing the pros and cons of interpreting 101 more broadly that has hitherto been the case?

    Personally, I believe Bilski and the like should be permitted to pass the 101 gate, and then have to sustain challenges under 102/103/112/etc. If the USPTO proclaims that it is ill prepared to deal with such subject matter, then perhaps now is a good time to get prepared.

  8. “do you think the Fed. Cir. is going to apply a different standard to the Board’s role in ex parte appeals than it does in interferences?”

    I’d rather them require some sort of evidence. But I’ve seen the Fed. Cir. get smacked down for a strict-TSM test and I’m wondering if a strict documentation-based substantial evidence test would be likewise smacked down.

  9. And to get back to SS and att. Let’s begin with SS “Today, we hold that the transformation of data, representing discrete dollar amounts, by a machine through a series of mathematical calculations into a final share price, constitutes a practical application of a mathematical algorithm, formula, or calculation, because it produces “a useful, concrete and tangible result”–a final share price momentarily fixed for recording and reporting purposes and even accepted and relied upon by regulatory authorities and in subsequent trades.”, “transformation by a machine” does NOT equal “software” or even “a storage medium containing instructions for a process to do some things, the process comprising:” and it is not difficult in the slighest bit to see why. If people want to claim things in the “system comprising: storage means, first means, second means” etc. format of SS then it’s debatably ok.

    You know why? Because it is a “system” being claimed, not a method, not a process. It has structure (even if imported from the spec explicitly by means plus function), and not only that, as a “system” with a cpu, data disk, ALU1, ALU2, ALU3, ALU4, ALU5 art is redily available, and then finding the method of blah blah they did using it should be an easy 103 if that method is known. Heck, if the method is found, then they might be able to just use the caselaw about automating a known process being obvious in combination with just the method reference.

    This case is a far cry from having people claiming the standard “hur, a data storage unit containing instructions to cause a processor to perform a method comprising: determining x, determining y, comparing x to y” which, to be quite honest to you reads like this in terms of patentable matter: “An object comprising: [blank]” (

    To summarize SS: Functional, or in this case, means plus function, language screws up the patent system once again because a decision is widely interpreted to be wider than it was, i.e. that you don’t even have to recite anything tangible in the claim. Commentary: Functional limitations should be eliminated in the pursuit of a more perfect lolunion because people as a whole are too stupd to grasp them and what they entail and thus lead to crp like the false interpretations of SS. Further commentary: It’s funny that all of the horrendously construed caselaw that lawyers so often rely on never really embodies the actual type of bs they’re attempting to perpetrate but rather shows a more specific valid application of the statutes that isn’t even close to what would be a valid application of the statute to their situation. This works both ways of course, with In Re Aller helping examiners knock down ranges from nail lenghts to distances between atoms, which the decision is perhaps not very applicable to.

    In the end SS says a machine to transform data (and likely also that a method to use such a machine to transform data) is not excluded under 101. No kidding? Machines and methods have been around for quite awhile and aren’t going anywhere. Software *implemented* methods are not rejectable under 101 just for involving software per se, or calculating etc. per se. This DOES NOT = software is patentable as such, or that instructions on an article are patentable no matter if the method the instructions are for are layed out.

    And JD in RE “You clearly don’t understand what is at issue in Bilski. It is not “misinterpretations” of State Street and AT&T that the Court is considering.” if you read the PTO brief then you see that is exactly what is at issue, among other things.

    More on AAT later. Oh and JD, it’s a shame there don’t appear to be any openings at your firm currently :( you guys do update your site regularly right?

    Also I don’t know how I got that underlined. And omg typepad messed up the last post, but it’ll suffice I guess.

  10. You’re rigth I used the term “evidence” to mean fact finding. My bad, I correct myself as the post was written in a hurry. I should say “ala expert testimony” not exactly expert testimony. Why? Because the BPAI is not judging “evidence” per se, they are judging facts that are found, which are deemed evidence by their very nature. Those facts must past the STANDARD of substantial evidence which I gather means “more than a scintilla” and “relevant enough that a reasonable mind might accept [it] as adequate to support a conclusion” this interpretation from

    “SUBSTANTIAL EVIDENCE – Substantial evidence means “more than a mere scintilla. It means such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.” Richardson v. Perales, 402 U.S. 389, 401 (1971). Q: JD what is the STANDARD for substantial evidence that is portrayed in this definition? Now, please compare and contrast that STANDARD with what SUBSTANTIAL EVIDENCE is (hint: it is a term which encompases the application of a standard *substantial* to *evidence* per se). One last thing, compare and contrast that substantial evidence thing you were just thinking about with facts found and fact finding. Finally, compare and contrast substantial (

    Fact finding or facts found that meet the same standard of substantial evidence is not the same thing as it BEING substantial evidence per se. I’m yet to see the decision presenting that such must be the case. I have read office policy on what examiners are to do when inadequate traversal is supplied by the applicant, here it is for your convenience:

    “If applicant does not traverse the examiner’s assertion of official notice or applicant’s traverse is not adequate, the examiner should clearly indicate in the next Office action that the common knowledge or well-known in the art statement is taken to be admitted prior art because applicant either failed to traverse the examiner’s assertion of official notice or that the traverse was inadequate.”

    I should add, that to be sure, I don’t believe that an examiner should be able to come in, official notice facts that all the components exist and are combinable for x reason and issue a nonf. This is reflected in the MPEP’s admonishment of using Off. notice as the primary basis of a rejection rather than being used to address peripheral concerns, i.e. the roundness of wheels on a bicycle with a warp drive where the bicycle with warp drive in the art has squarish wheels (to slow it down on landing? idk!). I’m through discussing Zurko on the merits though, seriously, if I haven’t been able to convince you with the simple compare and contrast above then I don’t know what else to do, you’re just not thinking.

    Tell me JD, if I say to you, as a car dealership owner, “the training empolyees must undergo meets the same standards as the training applied to recruits to the US marines”. Do you suddenly think that my employees ARE marine recruits? That is exactly what you, and presumably several attorneys, are doing in the above situation even though that is a straw man, it is very analogous in order to show what I believe you are missing, that a STANDARD may be applied to anything, but it does not make something else something it is not. I’m going to go make myself a sandwhich that comprises components that meet the APA standard of review of substantial evidence. I.e. they’re going to be bigger than a scintila, and sufficient for someone to base a conclusion of goodness upon. I cannot resist a hearty LOL “Zurko defense”, that again? Why didn’t they just do the one about “please give me an affidavit”.

  11. BTW, expert testimony is not “stating facts” as you mistakenly think. Experts provide their opinion. The fact finder (e.g. jury or judge) then “weighs” the testimony for its probative value.

  12. “Oh and JD, I know what you’re saying about APA etc. and I disagree, because the courts determine what is considered evidence to what degree, and examiners stating facts for the record (i.e. expert testimony) is considered admissible evidence even if not based on his personal knowledge based in his own experiences and rather being based on his knowledge of what is commonly known.”

    You have no idea what you are talking about. Examiners are not witnesses, i.e. they do not give “expert testimony.” Examiners are fact finders. In other words, examiners are supposed to find the evidence, not “testify.”

    You’re really in over your head in most of these discussions. There’s an old adage you may, or may not, have heard: when you’re in a hole, stop digging.

    Your “knowledge of what is common knowledge” is not evidence. Never was, never will be. Stick to your 10 second google searches for finding evidence.

    anonymous,

    do you think the Fed. Cir. is going to apply a different standard to the Board’s role in ex parte appeals than it does in interferences? (That’s a serious question, not being snide.) I think it’s possible, but unlikely. Based on the BPAI final decisions I’ve been reading lately, I don’t think the APJ’s are planning on getting a pass from the Fed. Cir. any time soon.

  13. Ex Parte Bilski

    is guitar hero a business method? a system to pay artists for the use of their music by people using a device which emulate a guitar using different haptic/tranduction … a new business for copyright owners and would-be entertainers — air guitarist turned consumer of music — (prior art or obviousness?) some percentage of that use is then paid to the copyright owners based on some royalty structure that may or may not be “new” in any real way …. the royalty could be based on number of units of the program sold or perhaps yearly licenses guaranteed up front …

    gibson guitars has sued (cant comment on the claims) for infringement … not going to assert the claims are business method but they are software/signal claims … is guitar hero obvious? what if you cant learn guitar such as one gibson *would* *could manufacture* (the manufacture claims could relate to a guitar that would not have had a market for sale without guitar hero having “created” that market) manufacture? could they claim the method by which copyright holders get paid for gibson-guitar sound recordings but not guitar hero-haptics/transduced sound recordings that appear to match the gibson guitar rendered sound recordings?

    additional intellectual *property* could someone make a plug-in to guitar hero for their own music, either directly from an instrument as an amplifier or through a computer interface and render it into a guitar hero box? its visual projector? a …. GTRRO format? iTunes compatible and capable of being binded by Apple keys for security?

    dont expect this to be answered, of course … but business method, copyright, signal/software, and related 101 / 103 issues? interesting suit to start … the likely innovation that may not be any more “obvious” than the iPod after hundreds of tries at making a compelling (market-wise) MP3 player …

  14. Oh and JD, I know what you’re saying about APA etc. and I disagree, because the courts determine what is considered evidence to what degree, and examiners stating facts for the record (i.e. expert testimony) is considered admissible evidence even if not based on his personal knowledge based in his own experiences and rather being based on his knowledge of what is commonly known. And the courts have held such to be the case. Zurko on the other hand, merely stated that APA applies and that the case before them was woefully executed. Surely you must know this is the case, I do not see how you can argue otherwise.

    And as to my fascination with you it’s because you represent the “Everyorneryattorney” to me.

    I’ll get back to you on SS att later I’ve gtg, 4 counts to make 95 this quarter, had a few problem cases in some biweeks and I’m still not seeing quite enough RCE’s to offset it.

  15. “The APA applies to the PTO, and the standard under the APA that is applied to PTO fact finding is substantial evidence.”

    … and it’s still up in the air whether the Board can rely on its own expertise to make findings of fact that survive Zurko in ex parte cases — “We therefore hold that, in the context of a contested case, it is impermissible for the Board to base its factual findings on its expertise, rather than on evidence in the record, although the Board’s expertise appropriately plays a role in interpreting record evidence. We do not — and need not — decide here the extent to which the Board in ex parte proceedings is so limited.” BRAND v. MILLER, 487 F.3d 862 (Fed. Cir. 2007).

  16. “it’s not disclosed as essential, it doesn’t have to be in the claim.”

    ^That’s why they get around the 112 1st’s everytime, the applicant never discloses it as being essential (or at least I’ve never had one that did in the spec, maybe such people exist somewhere though). However, the beauty of 112 2nd is that it is for filling in “gaps” between steps or something that is required in order to perform something that is later performed in the method. I properly use 112 2nd quite often and in doing it properly, I have yet to be traversed at all, much less properly, because they will not deny that there is a gap between elements that they consider essential. If they were to disclaim that such elements were disclosed as being essential then it would cause them even more trouble down the line. It’s hard to explain why this situation arises without giving you specific examples, but as a general one someone might say A method for moving a ball comprising: setting up two stands, one taller than the other, with an inclined plank between them, and wherein the ball moves down the plank. In the spec it says you “may” put a ball on a plank and then it may move down the plank (standard lawyerese for put a ball on an inclined plank and it will roll down). Thus, the step of “putting a ball on the plank” is omitted in the claim but is essential to having a ball go down a plank (a function that was included in the claim). Idk, it might not be the best example, but trust me people do this type of stuff in claims and they haven’t been arguing.

    Again, I normally only see 112 1sts on 2nd non’s or finals because you said in your reply “hur, such and such is essential” or some variation thereof. Believe me, I see this done all the time, attorney’s do this quite often to point out how their invention is distinguishable from the art of record and even in many cases use the word “essential” but sometimes use “crucial” etc. Though JD is right, there is no need to. They just do it to try to make a point I think JD.

    Drafter, that could be true, and maybe that was what helped turn the courts opinion.

    In other news I can’t wait till I can start telling attorneys that file 20+ claims that they’re an officer of the court and are required to not only zealously represent their client but assist in the pursuit of justice and to not complicate matters. Lol, anyone else read that case about the the judge getting so confuzzeled by the lawyers he ruled the wrong way and then the appeals court admonished the attorneys? Now all we need is for them to do the same for examiners.

    Excuse me while I go work on my first “good” case ever. One claim, as amended down from 20 in a preexam amend. He wants and allowance fast, but I just don’t know. I’d love to give him one, don’t get me wrong.

  17. “Next on the chopping block: misinterpretations of Zurko eh JD?”

    Your fascination with me is flattering, if not a little creepy. It is nice to know that you are enjoying our back and forth. I’ve taught many whipper snappers in my time. None quite so difficult as you, but then again none quite as persistent as you either.

    You clearly don’t understand what is at issue in Bilski. It is not “misinterpretations” of State Street and AT&T that the Court is considering.

    You may want to go back and actually read State Street and AT&T. Hard to see how the case law since then has been “false interpretations” in light of J. Rich’s definitive statement in State Street.

    Your continued misunderstanding of Zurko is also becoming annoying, so I will spell it out for you: The APA applies to the PTO, and the standard under the APA that is applied to PTO fact finding is substantial evidence. There are no “magic words” required. You can call it what you like, be it “Official Notice,” or an “assessment of common knowledge,” or (to use your favorite) a “statement of fact,” but if it ain’t backed up by substantial evidence, it don’t mean nothin’.

  18. I have received that “essential element/omitted item” 112, 2nd rejection many times, and traversed it successfully every single time. If it’s not disclosed as essential, it doesn’t have to be in the claim. I’ve never written an app where I described anything as essential. Though I have seen many patents that describe certain features as “important” or “necessary” and I just scratch my head. Who would write that?

  19. Further to the RA / 6k / pds discussion of inventorship and 112 … anyone ever weighed the argument that we are just workers-for-hire, and that any reduction to practice that we may accomplish (say, by drafting claims a little beyond the disclosure) just accrues to the benefit of our employer (the inventor) under longstanding principles of common law?

  20. Read the briefs.

    Is there a futures market for CAFC decisions?

    I’d be glad to purchase plenty of options on “AFFIRMED.”

    Especially glad to do so because I’m afraid that the market for patent drafting is about to contract.

  21. 2172.01 Unclaimed Essential Matter [R-1] – 2100 Patentability

    2172.01 Unclaimed Essential Matter [R-1]

    A claim which omits matter disclosed to be essential to the invention as described in the specification or in other statements of record may be rejected under 35 U.S.C. 112, first paragraph, as not enabling. In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976). See also MPEP § 2164.08(c). Such essential matter may include missing elements, steps or necessary structural cooperative relationships of elements described by the applicant(s) as necessary to practice the invention.

    In addition, a claim which fails to interrelate essential elements of the invention as defined by applicant(s) in the specification may be rejected under 35 U.S.C. 112, second paragraph, for failure to point out and distinctly claim the invention. See In re Venezia, 530 F.2d 956, 189 USPQ 149 (CCPA 1976); In re Collier, 397 F.2d 1003, 158 USPQ 266 (CCPA 1968). >But see Ex parte Nolden, 149 USPQ 378, 380 (Bd. Pat. App. 1965) (“[I]t is not essential to a patentable combination that there be interdependency between the elements of the claimed device or that all the elements operate concurrently toward the desired result”); Ex parte Huber, 148 USPQ 447, 448-49 (Bd. Pat. App. 1965) (A claim does not necessarily fail to comply with 35 U.S.C. 112, second paragraph where the various elements do not function simultaneously, are not directly functionally related, do not directly intercooperate, and/or serve independent purposes.).<

  22. My 10:33 had a middle part cut off again by this dad blasted typepad. I ha te, ha te, ha te you typepad.

    Thanks RA.

  23. Specifically this is the FP commonly used for this type of 112 first rejection that is no longer valid for originally filed claims:

    Claim*** rejected under 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor(s), at the time the application was filed, had possession of the claimed invention. ***.

    ^that is what used in FOAMs to reject claims for not being enabled by the detailed description but is now used in new matter situations only on subsequent actions on amended or new claims.

    Oh, and btw RA, if you’re still getting old rejections like a 112 1st of the form above on your originally filed claims in your FAOM then you should traverse, it was improper under current procedure any QAS (or likely any SPE/director) will back you up. That old timer examiner must not have gotten the memo. Did you hear we’re putting coversheets on the TPS reports now? My primary sometimes disregards such memos because he knows they’re a fad and the judiciary will probably correct the situation shortly.

  24. “We’re not talking issues of new matter here, so whether the claims were part of the original filing has little bearing; we’re merely concerned whether scope of the claims is supported by the enablement, description, [and omitted element] prongs of 112, 1st.”

    I’m not talking about new matter, I’m talking about what counts as enabling, descriptive language that counts towards the written description requirement of 112 first. And I’m saying that this is the new part of the interpretation of 112 1st, the claims as originally filed are now considered enabling, descriptive language for purposes of meeting that requirement under 112 1st. Prior to not too long ago that was not the case, or at least that is what I’m told. By that I mean the claims as originally filed used to be not considered enabling, descriptive language, but now they are. They used to have to rely on the Detailed Description for enabling descriptive language for written description support.

    “I’ll try to say it clearly now though I hope little hope of convincing you.

    If you (as the inventor) didn’t conceive of and teach in your detailed description how to *make* (connect together, etc.) a chair without a seat, your attorney may claim it (if he tries from the get-go), and if you (as the inventor) didn’t conceive of and describe how to *use* the chair in kit form), your attorney may claim it (if he tries from the get-go). The law seems to not permit your attorney (who is not an inventor) to claim an invention that you (the inventor) did not conceive of and demonstrate possession of through your written description at the time of filing, but under current procedure such hogwash is allowed because the claims as originally filed count towards enabling descriptive language in what is broadly referred to as the “specification” and all office personel may require is for you to amend your detailed description later to include language to backup the originally filed claims, and this is done through an objection, not a rejection. Generally, it is taken on the attorney’s “word” that he did not add any subject matter to the case and merely relayed the information incorrectly in the detailed description, but did so properly in the claims. Generally speaking attorneys are of such high character that if such were not the case they would immediately discontinue any improper claiming (lol).”

    ^Fixed it for you.

    The reason for this is because lawyers rationalized that they felt like in some instances they may have forgotten to fully enable some features of the invention in the detailed description, but disclosed those features in the claims as originally filed and thus disclosed them to the american people, so they should be allowed to have that count towards written desc (but only the claims as originally filed). The courts agreed, and that’s how it is now. Ask your local examiner if you doubt me. You will hardly ever see a proper 112 1st in your FOAMS anymore where they used to be commonplace. Trust me on this one, or if not, ask around and convince yourself.

  25. Not to be mean to you at all pds, or defaming in any other way, but if you’re relying on that to repudiate any of what I have said in this thread I must require that you be more specific as there is nothing in the body of any of them, even after thorough review, that suggests any differently than I or LL have suggested as to rejections under 112. LL stands correct, and Valendburg stands as horribly outdated at best and all of the cases you have proffered in defense of your contrary position lack any substance whatsoever and merely support my position in the posting in RE RA’s comment.

    To summarize briefly just the first case you submit: The case involves a claim that includes a recitation intertwined with “control of a computer” involving the use of the “clock timer” (i.e. a tangible benefit being realized in a manner intertwined with a structure). The district court struck down the validity of the patent under 112 1st written description stating that the 1st paragraph contained an “omitted element test” and that further since none of the claims in the entire patent had all the “essential elements” that all were invalid. Newman states that a rejection under 112 1st is incorrect and also a rejection under 112 2nd would be incorrect in that particular instance.

    “The district court accepted Microsoft’s proposition that the patentee must include in every claim “each and every element” that was described as “part of his invention,” whether or not the element is necessary for patentability of the claim. Failure to do so, the district court held, invalidates the claims for noncompliance with the written description requirement of §112 ¶1. That is not a correct statement of the law. Section 112 ¶2 instructs the applicant to “distinctly claim[] the subject matter which the applicant regards as his invention.” This does not automatically require inclusion in every claim of every element that is part of the device or its operation.”

    However, this is irrelevant to the discussion at hand (except to support my position in RE RA’s position) since we do not require “every element that is part of the device or its operation” to make a rejection under 112 2nd for omitted elements. I present to you even the very simplest explaination in the form of the basid form paragraph used to make such a rejection:

    Claim*** rejected under 35 U.S.C. 112, second paragraph, as being incomplete for omitting essential elements, >such omission amounting to a gap between the elementscooperative relationships of elements being used to indicate important parts.

    Thanks for playing, come again with better arguments.

    And you wonder why Office Personel fail to put such explanations in every OA and instead say “Applicant’s arguments are not persuasive”? It takes awhile to just type them out, even if you understand them and the attorney is clearly not being persuasive in the least.

  26. “Also RA, I’m surprised to hear that coming from you, I thought you kept up with these types of things?”

    Thanks, 6K. If you reread 112 (“specification shall conclude with one or more claims”) or the inventor’s declaration (“specification, including the claims”), you will see that the original claims have always (at least since the days I entered the scene) been considered part of the specification as filed for both 112, 1st and new matter purposes, so I don’t know what you could mean by “we were told very explicitly that it *used to be* a 112 1st rejection, but *now* the claims count towards original written description so that is no longer the case.” Nothing has changed in that regard – the original claims have always counted toward the original written description.

    We’re not talking issues of new matter here, so whether the claims were part of the original filing has little bearing; we’re merely concerned whether scope of the claims is supported by the enablement, description, [and omitted element] prongs of 112, 1st.

    “Standing in JD’s shoes, I would give you an F … for failure to Shepardize.”

    pds, thanks for the grade. You would really file a claim on a chair without reciting a “something to sit on”?? Then maybe we do need patent reform. :-) I checked your cases, none change any aspect of the Gentry Gallery decision, or the five Supreme Court cases cited in the article (which are all good law).

    I’ll try to say it clearly now though I hope little hope of convincing you. If you (as the inventor) didn’t conceive of and teach in your specification how to *make* (connect together, etc.) a chair without a seat, your attorney may not claim it (even if he tries from the get-go), and if you (as the inventor) didn’t conceive of and describe how to *use* the chair in kit form), your attorney may not claim it (even if he tries from the get-go). The law does not permit your attorney (who is not an inventor) to claim an invention that you (the inventor) did not conceive of and demonstrate possession of through your written description at the time of filing.

    [I'm actually not trying to be difficult - have a good evening. I'm giving up now on this topic - you can have the last word, and we will just disagree.]

  27. 6K

    On cue, you go digging for gold, find something yellow and shiny and assume you found something valuable. Unfortunately (for you), what you found was pyrite. You should also be cognizant of the phrase “beware of Greeks bearing gifts.”

    Mr. Vandenberg was not simply writing a scholarly article. Instead, he was reiterating an argument he made in Microsoft v. Reiffin that was subsequently rejected by the Court.

    In particular, you should read Judge Newman’s concurrence:

    link to ll.georgetown.edu

    The “essential element” test was also rejected by the Federal Circuit in these cases as well:

    link to ll.georgetown.edu
    link to fordham.edu

    Standing in JD’s shoes, I would give you an F … for failure to Shepardize.

  28. RA, I’m sorry, but whoever wrote that is full of old info. The “omited element” rejection is derived strictly from the 2nd para. End of story. Let me explain why. This is the result of the originally filed claims are part of the “written description” for purposes of meeting 112 1st. Stupd, I know, but such is the bs lawyers have been able to throw into the common law fray. This is why you will hardly ever see a 112 1st in your FOAM. I don’t know what case brought this about, but it was a recent one, as we were told very explicitely that it used to be a 112 1st rejection, but now the claims count towards original written description so that is no longer the case, now we can only object that the claim lacks antecedent basis in the detailed description, and they must add it in. They do, and the objection (not rejection) is overcome.

    Yes, it’s stupd, but it’s also valid within an interpretation of 112 1st. I will give the lawyers that much, even though the “spirit” of 112 1st seems different. The only real change was the lawyers argued that the claims are part of the “specification” (as opposed to the “specification’ being only the “detailed description” and not including the “claims” section). To put this in kindergartenese: what is considered the “specification” now has many parts to it, the background, the detailed description, and the claims that are originally filed (among others). I get it, you get it, and we all move on with life using 112 2nd’s in the instances LL mentioned.

    Also RA, I’m surprised to hear that coming from you, I thought you kept up with these types of things?

  29. “It is NOT vague or indefinite as the scope and meaning of the claim is clearly understandable (therefore no 112, 2, issue). If you can “reasonably” understand what would and what would not be covered by the claim then there is no 112, 2, issue. It is as simple as that. Is it broad, even excessively broad? Yes. But breadth is not an issue under 112,2 (unless there is “undue” breadth, i.e., not claiming essential elements).”

    LL, I love your posts. May I correct you? There was a very good article on this topic in the November 1998 issue of Intellectual Property Today:

    Vandenberg, J. et al., “Biplane Sinks Submarine: The Omitted Element Prong of Patent Law’s Written Description Requirement”, Intellectual Property Today, Volume 5 Number 11, November 1998, pages 8-10.

    As you can surmise from the title, the basis is not 112,2, but rather 112,1. I hope I can reproduce part of the summary as “fair use”, since I have not found it on-line. Full copies may perhaps be ordered from IP Today.

    link to iptoday.com

    Summary:

    A patent claim normally may be broader than the patent application’s disclosed embodiments, but it may not be broader than the disclosed invention. For this reason, a patent claim may not omit any non-optional element of the invention described in the patent application. That has been the law for at least 100 years. Many patent practitioners and, apparently, the Patent Office, however, have either overlooked this well-established prong of the “written description” requirement, or confused it….”

  30. “As a matter of Patent Office practice, a specification which contains a disclosure of utility which corresponds in scope to the subject matter sought to be patented must be taken as sufficient to satisfy the utility requirement of § 101 for the entire claimed subject matter unless there is a reason for one skilled in the art to question the objective truth of the statement of utility or its scope.”

    We notice very specifically “unless there is a reason…” that caveat alone just about nullifies the entire decision. I can garantee you that any claim using “determine a, determine b, compare a to b” format raises a SEVERE reason for One to question the objective truth of the statement of utility or its scope. Those are the types I see.

    A chair comprising a “box” is useful. A “chair” comprising merely “one leg” is useful (it only need be a fat leg, ever sit on a log?) much less one with three legs and a back. There is no possible reason for One to question this. This is of course presuming that the preamble shall be taken to breath life, which in all honesty, it doesn’t and the twins anticipate. Recite: “and a back to form the chair” or similar on the last line then we see some recitation of structure.

    “Another thing 6K … don’t confuse your policy wishes as to actual case law. It appears that your “analysis” of the law is based upon what you wish it to be, not upon the actually law itself.”

    No, I believe I’m accusing you of the same thing and the accusation is as baseless coming from you as it may be coming from me.

    “”just what is an invention anyway?”
    I think you’ve been struggling with that question since the day you set foot in the USPTO.”

    If you have the magic definition then please, recite it for the record. I see all manner of definitions in all manner of sources. Are we to include them all in what the legal definition is? Please, recite your definition for the record and set humanity straight on just exactly what it is. Or, shall we not go there, since you and I both know you cannot backup your intended jab?

    Oh, and pds, yes, I bother to understand what the invention is. You say you’d rather deal with someone like this, but what happens when that person tells you that it is their opinion that you must recite whatever it is that you think I, with my non-understanding of your invention, would want you to recite? In addition, I use caselaw just like the old guys around here do, in fact, many times much less. The caselaw is used to speed things up very usually, and little else. Guess who likes to speed things up? Me and the old guys. If you have valid reasonings that the caselaw doesn’t apply, then good enough, recite them and overcome. If you do not, then do not and accept your fate.

    And again SF, your fuel filter, once again, has an usefulness that One would never question. If nothing else, we see that it can be used as a chair, a doorstop, etc. etc., that is why material objects are rarely rejected under this. Determining, determining, and comparing on the other hand …

    RA you’re reading too much into the nuance of my sentences taken out of context. Sorry, that fails, just like it does in all the rest of the misquoted common law I so often see on here. Just fyi, I agree you do not have to make everything functional within the claim, it is when One would have a hard time definitively noting the functionality that you must, see for example the implications of pds’s caselaw above.

    LL, lord master and captain of the obvious, as usual, but thanks for grounding us. Nowhere in my explaination of my views on the topic did I rail against such common held beliefs as enunciated clearly by yourself and it is only in blatant misinterpretation thereof that one could even begin to search for such a disagreement.

    Everyone notice: “By not reciting what is useful about it, if it is not readily apparent to one merely reading only the claim (notice the claim is what is supposed to particularly point this out, NOT the spec as a whole), then the claim fails 112 2nd for sure.” IF IT IS NOT READILY APPARENT …

    The whole question boils down to, “would One understand that I’m limiting my claim to some specific embodiment (that I happened to disclose in the spec?) just by reading this claim?” and usually meaning “the body of this claim” by “this claim”.

    The answer to this question, for many determine, determine … calculate, compare, take the sum of, kind of claims is a resounding N O, especially since in the vast majority of cases the preamble IS NOT given patentable weight and there is no real reason for it to be given such other than to suddenly make what is not an invention into an invention by very questionable means.

    Perhaps I should have included in: “That’s not how it works charlie, the claims are there to put the public on notice of what you regard as your invention, and if you fail to include something useful in them then you didn’t claim an invention (the over-arching “statutory catagory into which the big 4 fall), you claimed something that is per se not even an invention” the big “IF IT IS NOT REDILY APPARENT …” from the preceding paragraph. Learn to not make the auther/speaker repeat all the caveats to general statements everytime he uses the general statement so that language can be used to consisely distribute ideas. Such a thing is, btw, what is wrong with half of lawyers arguments that I see in my day to day work, they expect a complete definition of the complete usage of every word/phrase every time it’s used, such a practice rendering explainations that to a common man should take a page, now take 100 pages to explain to those of supposed intelligence. Just fyi guys, here’s how normal people communicate information: state term 1, state any caveats to the term, now use term in rest of the body of the communication with caveats firmly in place in every usage. Sometimes normal people even mix it up a bit and state the caveats AFTER using the term a few times!

    In any event, it’s plain, on its face, common sense that “determine, determine, compare” requires further explanation (i.e. reading the explanation in the spec) to see the usefulness of performing the comparison. Does “a fuel filter comprising x and y” require further explaination? No, One realizes the use of the parts is as a fuel filter, which One also knows the use thereof is to filter fuel to reduce harmful contaminates. Does “A method comprising depositing x and y layers” require further explaination? No, the use is to deposit layers, the use of each type of layer being well known to One in most cases (glue: attach objects, plastic: form basic structure, etc.). What benefit does comparing two values yeild? Nothing more than any subtraction yeilds, unless we see what the intended purpose for making that subtraction was (i.e. gleaning information not “tied” to the claim from outside the claim, i.e. the spec). Sometimes it may very well be that the function of the software claim is on it’s face seen by One, but usually these cases involve claims where the tangible benefit is spelled out in the claim as software per se you can hardly ever determine the use of without further explaination. Ever try to back engineer program code that you don’t even know the function the code was written to perform? In all but the simplest cases this is VERY difficult for One. And in those simplest of cases then the functions being performed are nothing more than math, which iirc falls directly into a judicial exception.

    There is no question about it, the false interpretations of SS and AT&T are about to get their faces melted, as they are false interpretations to begin with. The only question remaining is how long will it take for the “decision”, i.e. explanation, to come on down the line. I, for one, am surprised it took this long. Next on the chopping block: misinterpretations of Zurko eh JD?

  31. Dear pds,

    I’m sure you are right, but how about Contributory Infringement;-?

  32. if a company has one chair leg in a vault in one city, another in another city, a third in a third city and a chair back in a vault in a fourth city, is the company infringing that claim?

    No … because it isn’t a “chair.”

    Also, a pet and teenage twins wouldn’t anticipate the claim. Claim terms are given their broadest REASONABLE interpretation. See MPEP 2111. Using a “reasonable” interpretation of the terms leg and back, one having ordinary skill in the art (e.g., a chairmaker) would not consider the legs of pet or the back of teenage twins to identically disclose the claimed 3 legs and back.

    BTW: LL, I understand that 6K doesn’t represent the whole of the USPTO. I’ll take an experienced examiner anytime who will take the time understand the invention and find the best prior art the first time around. With this type of examiner, we’ll reach an agreement very quickly as to what is patentable and what is not. However, the likes of 6K will try to read the distinctiveness out of my claim language and argue that the inventive aspects are inherent and/or obvious. These types of examiners attempt to overcome their inability in finding good prior art by (inartfully) trying to employ case law to help them out. However, like most non-attorneys their understanding of the law is limited by the fact that they rely on snippets from the case instead of actually reading the case, in its entirety.

    BTW: You were looking for a cite … Breadth should not be confused with indefiniteness. In re Miller, 441 F.2d 689, 693, 169 USPQ 597, 600 (CCPA 1971); M.P.E.P. § 2173.04.

  33. if a company has one chair leg in a vault in one city, another in another city, a third in a third city and a chair back in a vault in a fourth city, is the company infringing that claim?

  34. “real anonymous”, I beg to differ with you, but you are incorrect. If the claim simply recites:

    “A chair, comprising:
    three legs, and
    a back.”

    It is NOT vague or indefinite as the scope and meaning of the claim is clearly understandable (therefore no 112, 2, issue). If you can “reasonably” understand what would and what would not be covered by the claim then there is no 112, 2, issue. It is as simple as that. Is it broad, even excessively broad? Yes. But breadth is not an issue under 112,2 (unless there is “undue” breadth, i.e., not claiming essential elements).

    For some reason, people want to equate “very broad” as the same as “vague and indefinite”. These are two separate and distinct issues and need to be evaluated separately. Would the claim read on a stool or a pet or a thousand other things? Yes. But that is a breadth issue (i.e., prior art) and not an issue where the claim is not understandable.

    The applicant need not claim what the elements are used for, how the elements are connected, what they are made of, or even all of the non-essential elements. That is scope & breadth. If they claim it too braodly, they get shot down on art. Sometimes on art out of left field to let them know how broad it is.

    However, if it gets issued, anyone who reads it would understand what is covered. Anything that has (at least) 3 legs and a back can arguably read on the claim (depending on if you give the preamble weight or not – if you do, it would not read on a pet, for example).

    Hope this clears it up some. If not, I am sure that these lawyers here will be willing to cite legal precedent to support my explanation (I know it’s out there, but do not remember the cites.)

    Thanks,

    LL

  35. LL, I agree. Of course business methods shouldn’t be patentable matter, but how does the legislature or the judicature draw a line that is 1) clear 2) future-proof and 3) creep-resistant. Beyond the wit of an appeal court in a common law jurisdiction, I would think. Civil law ROW tackles the problem with a Statute (Art 52 EPC) that bars “computer programs” and “business methods” “as such” then leaves it to the courts to interpret the Statute, free of the hobbling power of common law Binding Precedent. What’s the US solution. We watch with interest.

  36. Readers, I think 6K intended to refer you to Zura’s “Cor Blimey” piece on the English Patents Court’s very topical Symbian decision. You can access it on http://www.bailii.org

    In my posting up above, I was referring to earlier English Decisions. For a definitive statement of the way the EPO shuts out business methods, go to the EPO website and read Decision T154/04 Duns Licensing. It’s the one in which Herr Steinbrener’s Board is rude about the English Court of Appeal’s earlier Aerotel/Macrossan Decision.

    Either way, in Europe business methods are not getting through to issue, and the likelihood of them getting through is not rising. Only the shut-out tool of choice is different: 101 in UK and 103 in the EPO.

    So, Bilski is interesting for folks in Europe too.

  37. “A chair, comprising:
    three legs, and
    a back.”

    By the way, pds, I’d say that is a classic example of an incomplete claim rather than a broad claim for a number of reasons (it reads like a kit rather than a “chair” since nothing is connected, and it doesn’t recite an essential element of a “chair”, namely a something to sit on). Even if you called it a “floorstanding article” I think it would still be incomplete for the first reason. Further, it would be anticipated by a family pet or teenage twins.

  38. All you lawyers out there. Just please remember that 6K does not represent all examiners nor the thoughts & beliefs thereof. A lot of us understand what is and what is not required to be in the claims. In this case, you all are generally correct.

    For that matter, functionality recited in an apparatus claim is not necessarily even given weight (depends on the facts).

    That said, personally, I would love to see the courts shoot down ALL business methods (using whatever rational they choose). Personally, I do not think that they should be patentable material (of course, until the courts do so, we do have to allow in accordance with precedents/laws/rules as they are). The “software” patent guidelines need to be cleared up & tightened up, too, for that matter.

    thanks,

    LL

  39. “But, in this case of failing to particularly point out, we also notice that it has been accepted that the “invention” must be something doing something useful.”

    Wrong, 6K. MPEP 2114 (current version, oops):

    “[A]pparatus claims cover what a device *is*, not what a device *does*.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original)

    Next you’re going to tell us that every claim to an electrical/electronic apparatus has to include a power source (since it would perform no function without power). How many integrated circuit claims are there that recite a battery or a power plant (and ground) rather than Vcc and ground leads which by themselves *do* nothing? What about claims to logic gates, or electric motors? (A motor without power doesn’t do anything – well, it could be ballast in a ship.)

    There is a difference between a claim being incomplete (lacking a necessary element/limitation) and being non-functional.

  40. pds: I spun my wheels a while ago arguing the patentability of a subcomponent with 6K to show that the USPTO selectively picks on software subcomponents (demanding a useful, concrete and tangible END result), but that same standard would torpedo most any other subcomponents in other arts. (e.g., a claim to a fuel filter without mentioning, fuel, fuel pump, etc.)

  41. 6K …. like the rest of the USPTO, you are trying to have the claims recite everything. Don’t confuse the invention with the invention’s usefulness.

    There has been no requirement that the claim recite the specific utility. In fact, the following citation was recently found in MPEP 2107.02(III)(A). The Court of Customs and Patent Appeals in In re Langer stated the following:

    As a matter of Patent Office practice, a specification which contains a disclosure of utility which corresponds in scope to the subject matter sought to be patented must be taken as sufficient to satisfy the utility requirement of § 101 for the entire claimed subject matter unless there is a reason for one skilled in the art to question the objective truth of the statement of utility or its scope.

    This case citation is no longer found in the latest version of the MPEP … because it doesn’t jive with the USPTO’s current beliefs. I’ve made this point before, but I’ll make it again, the MPEP is a very USPTO-slanted document. In many instances, I have found its explanation of case law to be very misleading. This is another example of where the USPTO practices the philisophy of “see no evil, hear no evil, speak no evil.” If the contrary (to its position) case law doesn’t exist in the MPEP, then it must not exist.

    By the way, does the following claim recite “something useful”?

    A chair, comprising:
    three legs, and
    a back.

    Based upon your analysis, it doesn’t.

    Another thing 6K … don’t confuse your policy wishes as to actual case law. It appears that your “analysis” of the law is based upon what you wish it to be, not upon the actually law itself.

    “just what is an invention anyway?”
    I think you’ve been struggling with that question since the day you set foot in the USPTO.

  42. Wrong 6K. Europe still isn’t patenting business methods or software as such, whatever you might have read on Prospector. Ariston says you can get a claim to a program on a carrier, but it has to be a program that solves a non-obvious technical problem. Autonomy finds that a program that delivers a novel and non-obvious way to run a computer is patentable. Laugh at “technical” if you like, but it’s holding a credible line, between what’s common sense patentable, and what isn’t.

  43. “The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.”

    PDS notably disregards the “particularly pointing out” portion of the 2nd paragraph. Let’s be clear PDS, how do you suppose you claim particularly points out what your supposed novel and non-obvious contribution/advancement/invention (just what is an invention anyway? That’s the real question here is) if you don’t even tell us what thing we can expect out of it? Most people conclude that an “invention” must , by definition, be doing something useful. If your claim is particularly pointing out what your invention is, then it must be particularly pointing out what your “thing that does something useful” is. By not reciting what is useful about it, if it is not readily apparent to one merely reading only the claim (notice the claim is what is supposed to particularly point this out, NOT the spec as a whole), then the claim fails 112 2nd for sure. But, in this case of failing to particularly point out, we also notice that it has been accepted that the “invention” must be something doing something useful. Since your description of your invention is not doing anything useful, then “your invention” is not doing anything useful.

    The underlying problem is, lawyers now wanting the claims to not actually be what the invention is (i.e. make 101 only apply to the specification as a whole, not to the claims), but merely just a description of what it is, and let what it is be some never clearly pointed out nebulous thing that was loosely described in the spec in some manner. That’s not how it works charlie, the claims are there to put the public on notice of what you regard as your invention, and if you fail to include something useful in them then you didn’t claim an invention (the over-arching “statutory catagory into which the big 4 fall), you claimed something that is per se not even an invention.

    This is why we were issuing 101 lack of utility rejections until some bunch of all knowing black robes decided that they knew better than the rest of the world, and all the generations heretofor, what an invention actually is. In any case, I wish they’d get on with the deciding already, I have a case that needs rejecting under that.

    Funny enough, if you guys haven’t read Patent Hawk lately, it looks like we might get rid of software patents right as Europe decides to adopt them hah. Congressional intervention is what we need. Real leadership and decision making as to what the voices of the people want rather than a bunch of squabbling people and a judiciary contradicting itself as it pleases.

  44. “The PTO cried for prior art on software cases because the art was buried in code and not in prior patents or technical literature.”

    This however is an increasing problem in all arts, as every time a new advance is made the older, more basic fundamentals one which that new idea is formed are left out and presumed known by the reader. Then someone comes along and what do you know, they happened to fill in some of the old blanks in their disclosure, gee golly, how swell of them, they should get a patent amirite?

  45. As EG noted, 35 USC 273 makes specific reference to a method as a method of doing or conducting business. Moreover, 35 USC 273 refers to “one or more claims for a method in the patent being asserted” and “a patented method.” As such, it is clear that Congress contemplated business methods as patentable subject matter.

    Of note, the USPTO’s brief makes no mention of 35 USC 273 … perhaps hoping that the Federal Circuit will bail them out (a common tactic I’ve seen employed by examiners before the BPAI).

    Of course, the Federal Circuit could probably produce some fancy footwork and try to get around it by saying that the business method must still be tied to a machine (i.e., “machine-implemented”) or “transform an article to a different state or thing” (see the USPTO’s brief). If this decision was purely based upon statutory construction, then I think the USPTO’s goose is cooked. However, the wind is blowing in the USPTO’s sail at the moment, so who knows?

    As an aside, I see that the USPTO again throws out the time-worn argument that “the claim fails to recite a practical application of that concept.” When will the people at the USPTO realize that claims are not meant to enable/define the claimed invention (i.e., 1st paragraph of 112)? Instead, the claims are meant to distinguish (i.e., distinctly claim per the 2nd paragraph of 112) the claimed invention.

    I see that the USPTO’s brief cites In re Musgrave (the coiner of the “technological arts” expression). However, I don’t think they realize that in the paragraph prior to the coining of the phrase “technological arts,” it was stated:

    We cannot agree with the board that these claims (all the steps of which can be carried out by the disclosed apparatus) are directed to non-statutory processes merely because some or all the steps therein can also be carried out in or with the aid of the human mind or because it may be necessary for one performing the processes to think. All that is necessary, in our view, to make a sequence of operation steps a statutory “process” within 35 U.S.C. 101 is that it be in the technological arts so as to be in consonance with the Constitutional purpose to promote the progress of “useful arts.” Const. Art. I, sec. 8.

  46. The USPTO does not ask the Federal Circuit to overturn State Street or AT&T v. Excel Communications. The USPTO requests a number of clarifications (see pages 26-32 of their supplemental brief). 35 USC 273(a)(3) should not have an impact on what the USPTO is asking for.

  47. As noted in the Appellant’s Supplemental Brief, 35 USC 273(a)(3) is going to make it difficult for the Federal Circuit to repudiate State Street or AT&T v. Excel Communications for improperly saying that “methods of doing or conducting business” can be patented. 35 USC 273, which was added by Congress in 1999 after State Street and AT&T v. Excel Communications to provide a “prior user” defense shows Congress clearly recognized that such patents can be validly granted.

  48. P.S.
    Isn’t the debate supposed to be limited to the question of whether “initiating transactions” is sufficient to render the claim as non-abstract pursuant to 101?

    It must be the electrolytes in the BrawnO that causes everyone here to instantly shift into arguing 102/103.

  49. Can’t we restrict our conversation to debates about how flat our flat Earth is or how circular is the orbit of the Sun around our creationist home land? All this talk about the non-physicality and abstractionism of “initiating transactions” is giving me a headache.

    I yearn for the good old days when elves were elves and Merlin cast pure magic spells. Who needs all this “science” stuff to come in and distort our reality?

    I urge the Bilski en banc panel to outlaw science and to rule that everything at the USPTO is per se run by the perpetual motion power of Intelligent Design.

    Thank you for spending your ADHD moment on this message.

    We now return to our normal Idocracy entertainment. Remember to drink your BrawnO (TM). It’s got electrolytes. :-)

  50. Bilski illustrates why so many people are generally skeptical about claims for business methods: (1) It seeks to patent one particular type of risk arbitrage by intermediaries even though intermediaries have engaged in risk arbitrage with respect to commodities for centuries or millenia. (2) It claims to be a process and yet does not describe how to achieve the key steps in the process (calculating the risks, finding the potential counter parties and structuring the agreements with the counter parties).

    On top of all that, there is the matter that no one in their right mind would practice the method as claimed which according to the plain wording of the Bilski brief cited by Dennis requires as SEQUENTIAL steps:
    1.) first make fixed rate commitments to multiple retail customers based on historical average prices;
    2.) then, AFTER making the commitments to the retail customers, you look for potential counter parties.

    The claim as made is not new, it is not useful and it is not a process (because it omits methods for doing key steps) and accordingly it should not be patentable under a section 101 analysis.

  51. The problem with 102/103 attacks is that the stuff is so well known no one bothers to put it in a form an examiner can use.

    The PTO cried for prior art on software cases because the art was buried in code and not in prior patents or technical literature.

  52. “This isn’t the question, but any RETAIL STORE reads on the claim”

    I think this actually should be (at least a part of) the question. Claims that preempt an abstract idea or that require only human activity with no physical transformation are going to have huge prior art problems due to the breadth of such a claim. Why not let 102/103 handle these situations instead of 101, whose “bright-line” jurisprudence almost always gets slippery and muddied after a couple years. Maybe even set the evidenciary requirements under 102/103 lower for such claims… it seems preferable to the analogize/distinguish/repeat 101 evolution process.

    Oh – does anyone know when oral arguments scheduled on this (or at least when briefing is scheduled to conclude)?

  53. This isn’t the question, but any RETAIL STORE reads on the claim since it basically recites the function of a “middle man”. He pays one price for bulk goods from a supplier, and then charges a higher price to sell them retail to consumers. All the middle man needs to do is mark up retail prices enough and he can afford to hold both prices stable even through market fluctuations, thereby hedging risk for all parties.
    But as to 101, “Balancing risk” isn’t concrete and tangible and choosing prices is not physical. The only physically embodied part of the claim, the commodity, has nothing to do with the inventive concept, and is not physically required by ANY of the process steps. The process doesn’t USE the natural gas.

  54. It’s a pretty quiet day, so let’s liven things up.

    Here’s my simple 101 “rule” for business methods:

    If the “inventive step” (sorry to sound so EPO maybe should say “point of novelty”) is nothing more than calculating a result that, given infinitely enough people and calculators, could be accomplished manually, the claim is unpatentable under 101.

    Here, the “inventive step” is calculating the energy buys necessary to offset the sells. Claim invalid.

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