Bilski Hearing to Include Amici Arguments

En banc oral arguments for Ex parte Bilski will be held at 2:00 pm May 8 at the CAFC Courthouse in DC. [Calendar] Room 201 is expected to be filled to capacity for this important case.

In addition to the parties, the CAFC has requested oral arguments from two amici: Regulatory Datacorp (RDC) and the “Financial Services Industry” group of seven that includes Bank of America, Morgan Stanley, and Wachovia.

Professor John Duffy will argue for RDC. Over the past several years, Duffy has firmly established himself as the country’s leading conservative patent thought leader.  RDC’s amicus brief makes the point that applied economics falls well within any reasonable definition of “useful arts.”  According to Duffy, statutory subject matter should only limit claims that are directed to abstract ideas, physical phenomena, or principles of nature.

On the other hand, BOA argues that State Street and its progeny are unduly broad both as written and as interpreted. BOA rejects any “technological arts” requirement that would allow a token inclusion of a ‘machine’ to render a claim patentable subject matter. Bill Lee, Managing Director of WilmerHale will make this argument.

Notes:

44 thoughts on “Bilski Hearing to Include Amici Arguments

  1. e#6k wrote:

    Maybe you haven’t read any of the pieces on what a “useful” art (i.e. processes etc.) are?

    _____________________

    What I am refering to is the Patent Act of 1952 and any Supreme Court Case Law that restricts it. Anything else is pure conjecture and has no force of law on what is or is not patentable subject matter.

    ______________

    e#6k wrote:

    those are some good starters for you as someone even more novice than myself.

    _____________

    I am a professional inventor so I am not sure what you are accusing me of being a novice at. Nor am I sure what you are claiming to be a novice at yourself.

    ___________

    e#6k wrote:

    So, where exactly is the signed document saying that anything and everything your lolmind can conceive of us eligible for examination? Say again? Oh, what’s that? You don’t have one? Hmmm,
    ___________

    Yes, its the Patent Act of 1952. In addition to 101,100 (b) expressly states, The term “process” means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.

    Furthermore, no where in the statue does it limit what the new use can or should be. Therefore I am free to imagine as many new uses as my imaginitive creative genious can conceive and reduce to practice and submit them all for examination as patentable subject matter.
    _________________

    e#6k wrote:

    The very people that created the system didn’t think it should cover everything your lolmind could come up with so why do you?

    ________________

    I addressed this very issue for you in the original Bilski thread. Obviously you did not read it, or read
    it and did not understand. I will repost it here for your benefit. Please learn it. Learn it well.

    ” I specifically addressed the fact that a person may not receive a patent that preempts one of the judicial exceptions of laws of nature, natural phenomenon and abstract ideas, or preempts all application of one of these judicial exceptions. Traversely, if a person discovers an application for a law of nature, natural phenomenon, or abstract idea, the Supreme Court has ruled such
    discoveries/inventions are patent eligible subject matter. ( See Diehr) Of course the application may fail at 112, 102, or 103, but nonetheless is required by law to pass the bar at 101 and be examined.”

    Understand now?

    P.S.

    As for as a signed document is concerned I believe the President of the United States signed the document enacting the 1952 Patent Act. All of Congress does not sign.

  2. Posted by: Pro Se Pro | May 05, 2008 at 05:37 PM wrote

    Maybe you haven’t read any of the pieces on what a “useful” art (i.e. processes etc.) are?

    _____________________

    What I am refering to is the Patent Act of 1952 and any Supreme Court Case Law that restricts it. Anything else is pure conjecture and has no force of law on what is or is not patentable subject matter.

    ______________

    Pro Se Pro wrote:

    those are some good starters for you as someone even more novice than myself.

    _____________

    I am a professional inventor so I am not sure what you are accusing me of being a novice at. Nor am I sure what you are claiming to be a novice at yourself.

    ___________

    Pro Se Pro wrote:

    So, where exactly is the signed document saying that anything and everything your lolmind can conceive of us eligible for examination? Say again? Oh, what’s that? You don’t have one? Hmmm,
    ___________

    Yes, its the Patent Act of 1952. In addition to 101,100 (b) expressly states, The term “process” means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.

    Furthermore, no where in the statue does it limit what the new use can or should be. Therefore I am free to imagine as many new uses as my imaginitive creative genious can conceive and reduce to practice and submit them all for examination as patentable subject matter.
    _________________

    Pro Se Pro wrote:

    The very people that created the system didn’t think it should cover everything your lolmind could come up with so why do you?

    ________________

    I addressed this very issue for you in the original Bilski thread. Obviously you did not read it, or read
    it and did not understand. I will repost it here for your benefit. Please learn it. Learn it well.

    Pro Se Pro Wrote:

    e#6k I specifically addressed the fact that a person may not receive a patent that preempts one of the judicial exceptions of laws of nature, natural phenomenon and abstract ideas, or preempts all application of one of these judicial exceptions. Traversely, if a person discovers an application for a law of nature, natural phenomenon, or abstract idea, the Supreme Court has ruled such
    discoveries/inventions are patent eligible subject matter. ( See Diehr) Of course the application may fail at 112, 102, or 103, but nonetheless is required by law to pass the bar at 101 and be examined.

    Understand now?

    P.S.

    As for as a signed document is concerned I believe the President of the United States signed the document enacting the 1952 Patent Act. All of Congress does not sign.

  3. Yet again, 6K embodies the expression “a little knowledge is a dangerous thing.” Once getting a hold of a definition, a couple centuries old, of “useful arts,” he gleefully wants to take us back to the days when buggy whips deserved their own art unit.

    I wonder if he has actually read the entirety of Article 1 Section 8 of the U.S. Constitution. In case he has not, here it is the relevant portion:

    “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”

    Notably, the term “useful Arts” is accompanied by “Science.” As such, the discoveries of inventors appear not to be limited to just the useful arts. Instead, “the Progress of Science” can also be promoted.

    The term “science” is very broad. From link to en.wikipedia.org “In its broadest sense, science (from the Latin scientia, meaning “knowledge”) refers to any systematic knowledge or practice.” Based upon this definition, the strict constructionalists at the Supreme Court should be firmly entrenched in the expansive subject matter camp.

    BTW: What does it say about 6K when he is a willing participant of “a currently ridiculous system.” Moreover, like Dudas et al., he wants to substantively change the system from the inside, which is NOT allowed by our current system. He also thinks that the political appointees with minimal IP experience that constitute the USPTO leadership should be making U.S. policy as to patent law. No wonder he is the most derided poster on this board.

  4. Maybe you haven’t read any of the pieces on what a “useful” art (i.e. processes etc.) are? Here’s a hint, there are definitive boundaries as to what the “useful arts” were then, and still are, though the courts are just now catching on since having stumbled during the internet software (and business method) bonanza. More useful info for you: doing math per se is not considered one of the useful arts, doing finances per se was not considered one of the useful arts (though the courts seem to have forgotten this and now deem that “usefullol”, for now anyway), and the form of specific signals per se(nor really any embodiments of matter other than the big 3 should be, plasmalol?) are not considered one of the useful arts. There may be a few more, but those are some good starters for you as someone even more novice than myself. So, where exactly is the signed document saying that anything and everything your lolmind can conceive of us eligible for examination? Say again? Oh, what’s that? You don’t have one? Hmmm, wonder why? The very people that created the system didn’t think it should cover everything your lolmind could come up with so why do you? Because you’re greedy and see opportunity in the vulnerability of a currently ridiculous system that’s why.

    Don’t worry, keep exploiting the system, the SC will step up eventually if congress doesn’t beat them to it.

  5. e#6k wrote:

    Until I see a signed statement from all the congresspeople that voted for the act back when stating such this is where we’ll have to part ways in terms of beliefs.

    __________________

    Read and weep;
    In 1952 Congress enacted U.S.C. §101 which provides: “Whoever invents or
    discovers any new or useful process, machine, manufacture, or composition of matter,
    or any new and useful improvement thereof, may obtain a patent therefrom,
    subject to the conditions and requirements of this Title.”

    Now EK6 you are bound by this statue until Congress changes it or the Supreme Court clearly restricts it. In my opinion, any Patent Examiner that ignores the law is guilty of pure belligerence and willful misconduct.

    I have heard that many PE’s under the current PTO Regime practice their own backwards brand of pseudo judicial activism from the PTO cubicle bench. Doing so only harms our society and retards progress of the technological arts.

    Change the PTO, not the Law!

  6. e#6k wrote:

    Until I see a signed statement from all the congresspeople that voted for the act back when stating such this is where we’ll have to part ways in terms of beliefs.

    __________________

    Read and weep;
    In 1952 Congress enacted U.S.C. §101 which provides: “Whoever invents or
    discovers any new or useful process, machine, manufacture, or composition of matter,
    or any new and useful improvement thereof, may obtain a patent therefrom,
    subject to the conditions and requirements of this Title.”

    Now EK6 you are bound by this statue until Congress changes it or the Supreme Court clearly restricts it. In my opinion or any Patent Examiner that ignore the law is guilty of pure belligerence and willful misconduct.

    I have heard that many PE’s under the current PTO Regime practice their own backwards brand of pseudo judicial activism Please read and learn the following Statue:
    from the PTO cubicle bench. Doing so only harms our society and retards progress of the technological arts.

    Change the PTO, not the Law!

  7. big hairy rat | May 02, 2008 at 04:40 PM wrote:

    I disagree. Before the PTO or the Courts can
    decide if an invention qualifies under
    101 it needs to know what the new element
    (“secret sauce”) is. An inventor should
    state clearly what it is that he is claiming as
    the essence of the invention that is
    different from what came before.

    ___________________

    1952 Congress enacted U.S.C. §101 which provides: “Whoever invents or
    discovers any new or useful process, machine, manufacture, or composition of matter,
    or any new and useful improvement thereof, may obtain a patent therefrom,
    subject to the conditions and requirements of this Title.”

    Now Big Hairy Rat, after reading the aforementioned statue can you quote to
    me where in 101 it says to that

    1. The PTO or Courts must ask what the new element (“secret sauce”) is?

    2. Or where does it say that an inventor must say what the essence of the
    invention is?

    3. Or that for that matter, where does it say the PTO or courts must asked
    what the new elements are, or how they are different from what came before?

    Big Hairy Rat, what you are in essence arguing is that novelty, under 102,
    should be addressed first in 101, or before. Well, that argument has already
    been made and answered by the Supreme Court. Please read the following section
    from Diamond V. Diehr that addresses your argument and explains why you are
    wrong:

    “It has been urged that novelty is an appropriate
    consideration under §101. Presumably, this argument results from the language
    in §101 referring to any
    “new and useful” process, machine, etc. Section 101, however, is a general
    statement of the type of subject matter that is eligible for patent protection
    “subject to the conditions and requirements of this title.” Specific conditions
    for patentability follow and §102 covers in detail the conditions relating to
    novelty.13 The question therefore of whether a particular
    invention is novel is “fully apart from whether the invention falls into a
    category of statutory subject matter.” In re Bergey, 596 F.2d 952, 961, 201 USPQ 352,
    361 (CCPA 1979). See also Nickolas v. Peterson, 580 F.2d 898, 198 USPQ 385
    (CA6 1978). The legislative history of the 1952 Patent Act is in accord with
    this reasoning. The Senate Report provided:
    Section 101 sets forth the subject matter that can be patented,
    ‘subject to the conditions and requirement of this title.’ The conditions under
    which a patent may be obtained follow, and Section 102 covers the
    conditions relating to novelty. S. Rep. No. 1979, 82d Cong., 2d Sess., 5
    (1952) (emphasis supplied). It is later stated in the same report: Section
    102, in general, may be said to describe the statutory novelty required for
    patentability, and includes, in effect, the amplification and
    definition of ‘new’ in Section 101. Id.,at 6. Finally, it is stated in the
    “Revision Notes”: The corresponding section of [the] existing statute is split into
    two sections, Section 101 relating to the subject matter for which patents may
    be obtained, and Section 102 defining statutory novelty and stating other
    conditions for patentability. Id.,at 17. See also H.R. Rep. No. 1923, 82d Cong.,
    2d Sess. (1952), at 6, 7, and 17.

  8. big hairy rat | May 01, 2008 at 02:12 PM WROTE:

    My read on the brief is that Duffy is holding Bilski’s head under water and inviting the court to toss out the patent.

    __________________

    Actually Duffy gives Bilski’s claim one a life preserver. If the CAFC follow
    Duffy’s reasoning, which is firmly grounded in Supreme Court precedent they
    must ask:

    1) Is Bilski’s Hedging method so broad that it preempts all practical
    application of the principle upon which it is based?

    (Also until the actual application is read there is no way of knowing
    exactly what that principle may be.)

    If the answer is yes then Bilski’s claim one is not statutory subject matter
    under Diehr. If the answer is no then Bilski’s claim one is statutory subject
    matter but still has to pass the bar at 112, 102, and 103.

    This is also the same reasoning that Breyer used in the decent in the
    metabolite case, so there have been no signals from the Supreme Court that the Diehr
    standard is no longer good law. The PTO simply needs to fall in line and
    follow the law.

  9. “At the time of the creation of the act software was either non-existant or all but non-existant …”

    This is an amazing insight! It seems that patentable subject matter excludes anything that wasn’t already invented at the time the Patent Act was “created.” This will certainly fix the backlog problem at the PTO.

  10. –At the time of the creation of the act software was either non-existant or all but non-existant and the practicalities of making it useful in a manufacturing sense (which contrary to whatever else you’ve heard that is what the original congress that made patent laws intended them to cover, and signed documents abound stating such) were virtually non-existant save sci-fi. I have to say, reading the piece about the original creators distinguishing between the “useful arts” and the “financial arts or liberal arts” was quite eye opening.–

    Um, to clarify any ambiguity, please distinguish between the Constitutional Convention that wrote the Constitution and the Congress that wrote the Patent Act of 1952, which created the patent system we have today. As to the Patent Act, Congress certainly intended to include methods, not only manufactured items.

    Whether George Washington’s letters matter at all might depend on whether you approach the Constitution as static (Scalia!) or a living document. This would be interesting for the Supreme Court to rule on: whether business methods are a “useful art”.

  11. “Yes, the question is fair. But it is asked at 102 and 103 NOT 101.”

    I disagree. Before the PTO or the Courts can decide if an invention qualifies under 101 it needs to know what the new element (“secret sauce”) is. An inventor should state clearly what it is that he is claiming as the essence of the invention that is different from what came before.

  12. “Congress intended a broad access for what could be examined as patentable subject matter.”

    Until I see a signed statement from all the congresspeople that voted for the act back when stating such this is where we’ll have to part ways in terms of beliefs. At the time of the creation of the act software was either non-existant or all but non-existant and the practicalities of making it useful in a manufacturing sense (which contrary to whatever else you’ve heard that is what the original congress that made patent laws intended them to cover, and signed documents abound stating such) were virtually non-existant save sci-fi. I have to say, reading the piece about the original creators distinguishing between the “useful arts” and the “financial arts or liberal arts” was quite eye opening. I wonder why such has been largely ignored in recent decades?

  13. “an actual inventor”

    “limits on my imaginative creative genius”

    Laugh riot.

  14. big hairy rat | Apr 30, 2008 at 07:41 PM wrote:

    So far as the patentable essence is concerned: it seems to me that when a patent consists of a combination of pre-existing elements it is fair to ask what is the “secret sauce” that makes it so special that it should be patentable?

    —————

    Okay BHR lets get this!

    Yes, the question is fair. But it is asked at 102 and 103 NOT 101. Why?? Two words…Congressional Intent! Congress intended a broad access for what could be examined as patentable subject matter.

    The underpinning reasons are sound for such policy. Congress wants to promote the useful arts and not impede it by limiting consideration for any future or current technological innovations.

    And as an actual inventor it works great. I have an incentive to think up as many innovative ideas as my imagination is capable of knowing they will be all examined and if qualified receive a patent.

    Start placing limits on my imaginative creative genius and I might not be so motivated to create and share my gifts with the public.

    Now if you disagree with congress that’s fine. Write/lobby congress to change the statute but don’t use the courts to try and make limitations to the patent laws that congress never intended to make.

    Got it?

    GOOD!!

  15. JD: “Scalia is an idi0t. And a lazy one at that.”

    I knew there was a reason I almost never agree with anything JD says.

    He is one of those left-wing, tree-hugging, bleeding-heart liberals!! All his “follow the rules” lines were just a cover to make him look like a normal right-wing, button-down, lawyer. Were you one of those that took the brown acid at Woodstock? Are you a member of the ACLU, as well? :)

    It’s past 5:00. Time for your bourbon.

    later.

    thanks,

    LL

  16. Malcolm,

    It is DoubleThink:

    The Framers said this, and I agree with them; and
    I also agree with the right wingnut talking point too.

    “I agree and I agree”; they are right of course.

  17. “So far as I know Scalia is the man. I’ve never really heard a justified critique of anything that he’s ever done.”

    That’s funny.

    “One of the most revealing statements in today’s opinion is the Court’s grim warning that the criminalization of homosexual conduct is ‘an invitation to subject homosexual persons to discrimination both in public and in the private spheres.’ It is clear from this that the Court has taken sides in the culture war …”

    ?!?!? Nothing like adopting and regurgitating a right wingnut talking point in response to a a statement of indisputable fact. All that matters to Antonin is that “The Framers” didn’t expressly grant gay people equal rights so, if a bunch of Bible-thumping rednecks want to criminalize homosexuality, that’s their business! Majority rules, nyah, nyah, nyah, and don’t mess with Texas.

  18. So far as I know Scalia is the man. I’ve never really heard a justified critique of anything that he’s ever done. Including the recount debacle.

    “Oldguys 102(a) and (b) work.”

    E6k yearns for the old days, back when men were men, men built useful machines, and had non-obvious innovation behind them, and then patented them without squabbling over the inanities arising from more crowded fields and everyone wanting more than their piece of the pie.

  19. YetAnotherAnon:

    <<

    2nd Prediction: CAFC adopts the USPTO position on Bilski’s claims.

    3rd Prediction: CAFC does not adopt the Financial Services brief position, but holds the door open to take that position in a future case (i.e. when a Data Treasury patent makes it to the CAFC).

    4th Prediction: Judge Newman dissents.<<<<

    I agree with those prediction, and make the following:

    5th: In re Musgrave is resurrected.

    6th: State Street Bank is cited favorably but distinguished based on its reliance on a computer system.

  20. Malcolm

    I spent some time looking at patents for collaborative filtering methods / recommender systems. Even though no one has been able to win the Netflix Prize yet I expect that when someone does, a patent holder will come forward and allege that the solution infringes on their patent.

  21. “2. I am skeptical about such a patent claim since it is almost certainly an attempt to solve a statistical inference problem and all of the working methods for such a problem tend to reflect the underlying mathematics. The problem with this is that it may make it impossible to design around a patent since all possible methods are a reflection of that underlying structure.”

    Yup. And one way around this would be to write a “narrow” claim that describes in fine detail the computing device and software that is actually used to achieve the unexpectedly awesome results.

    But for some reason, in spite of the awesome greatness of the particular device and its undeniable value to society, nobody is really interested in that sort of claim. Why might that be?

  22. **
    “a method of making more money, comprising doing calculation X, wherein calculation X is derived from economic reality, and using the result to make more money”

    sounds like it should be rejected under 102 or 103 and not 101
    **

    How does the Examiner make the 102 or 103 argument if the calculation has never been described before?

  23. real anonymous: I have no political ax to grind and I have no special stake in the outcome. What I see in this forum is a lot of patent practioners and patent claimants who do have a vested financial interest in an expansive patent system. I am more interested in what the patent law should be than what it is. I am at least as well qualified to comment on the broad issues as some of the posters to this forum.

    I have no objection to a patent system. I do not have a philosophical objection to patenting algorithms or business methods in the abstract. Where I have a problem is that in practice the patenting of algorithms and business methods appears to have gotten so out of hand that the best thing to do from a policy perspective is to simply prohibit patenting of algorithms. In Duffy’s brief (page 31) he talks about business methods which are “too imprecise, indefinite, and abstract for the patent system to be rationally applied.” Exactly!

    Broad, imprecise patents on algorithms are a drag on the economy and an impediment to technological advance.

    My read on the brief is that Duffy is holding Bilski’s head under water and inviting the court to toss out the patent.

    It is interesting that Duffy spends so much time trying to establish a precedent that would specifically protect his clients’ claim to a method of data mining financial records looking for criminals and terrorists. Whether or not the specific method developed by his clients should be patentable I cannot say but:
    1. the idea of data mining financial transactions for terrorists was obvious before 2000 and police forces were looking at the use of financial transaction data to identify organized crime long before that;
    2. I am skeptical about such a patent claim since it is almost certainly an attempt to solve a statistical inference problem and all of the working methods for such a problem tend to reflect the underlying mathematics. The problem with this is that it may make it impossible to design around a patent since all possible methods are a reflection of that underlying structure.

  24. “RDC’s amicus brief makes the point that applied economics falls well within any reasonable definition of “useful arts.” According to Duffy, statutory subject matter should only limit claims that are directed to abstract ideas, physical phenomena, or principles of nature.”
    Curiously, Patently-O published a piece some time ago making a Scalia-type or “textualist” analysis of “useful arts,” suggesting that it had to be based on the concept of that term around the time of adoption of Article I, section 8, clause 8. (See link to patentlyo.com) Based on that reasoning, it would seem important that in and before the Eighteenth Century “useful arts” were clearly distinguished from “liberal arts” and from trade, commerce, and business. (See, e.g., George Washington’s letter to Lafayette about useful arts progress and commerce in U.S.) Useful arts were things like flour-milling, soap-making, candle-making, tanning, dyeing, and other artisanal activities. (What the PTO Supp. Br. calls “manufactures.”)
    Applied economics falls well within the concept of trade, commerce, or business and well _without_ what were useful arts. More like what the East India Co. was doing that resulted in the Boston Tea Party that Graham v. Deere says was part of the backdrop of Article I, section 8, clause 8. Accordingly, if you accept the textualist, Scalia-type approach suggersted in the Patently-O piece, you would be obliged to conclude that applied economics was definitely _not_ patent-eligible subject matter.

  25. Rat, if you don’t have a firm grasp of patent law, or of technology, then don’t you think that others might be more qualified (and perhaps be less biased politically) than you to make patent policy judgments that would be good for the whole country? Wouldn’t there be something you’re more qualified for, from an economic perspective, than resonating opinions about certain patent policies you only half understand?

    Feynman gave part 2 of the speech in 1983 at the JPL. It was entitled, “Infinitesimal Machinery,” and according to the editors of the Journal of Microelectromechanical Systems, Feynman “anticipat[ed] the sacrificial-layer method of making silicon micromotors, the use of electrostatic actuation,” etc. Perhaps the MEMS U.S. patent landscape would have looked a lot different if Examiners had considered Feynman’s 102(a) and (b) work. The specond speech was reprinted, a decade later, here:

    link to ieeexplore.ieee.org

    I think you can also now find transcripts of the second speech in several patent files (including e.g. US 7,015,546).

  26. “Rat, you’re not a physics major?

    link to zyvex.com

    I got a degree in physics a long time ago. Thanks for posting the link to the Feynman talk. I had never seen it before. I met Feynman once – I think it was in 1976.

  27. Prediction: CAFC holds that Bilski’s claims fall at the threshold of 35 U.S.C. 101.

    2nd Prediction: CAFC adopts the USPTO position on Bilski’s claims.

    3rd Prediction: CAFC does not adopt the Financial Services brief position, but holds the door open to take that position in a future case (i.e. when a Data Treasury patent makes it to the CAFC).

    4th Prediction: Judge Newman dissents.

  28. “a method of making more money, comprising doing calculation X, wherein calculation X is derived from economic reality, and using the result to make more money”

    sounds like it should be rejected under 102 or 103 and not 101

  29. “You should know better than to look for the “new and patentable essence of their claims.” Claims are to be considered as a whole … even MM knows this.”

    But you also look for whether the claim is, in fact, a patent on the abstract concept or relationship itself. For example, a claim to a method of making more money, comprising doing calculation X, wherein calculation X is derived from economic reality, and using the result to make more money.

  30. Again, come on … not even examiners argue unpatentability because all the elements were known. If the invention is anticipated or obvious, then base the rejection on 102 or 103.

    Too many arguments are based upon the assertion “we cannot find prior art because it was so well known that nobody wrote it down” so we need to knock out these claims with 101. Sheeet … most of what is written in patent applications and published articles is also well known . People love to repeat what is already known because it provides a contrast to what is unknown and it is good filler material. The further we get into this information age, the harder it will be to argue that something done 1, 5, 10 years before the claimed invention was “well known” but not written down.

    Of course, all this technology that has popped up in the last 10 years which most of us rely upon to make our lives so much easier wouldn’t be considered patentable under the Financial Services brief. The fact that I can download an office action directly from the PTO into my harddrive, do an OCR scan on it, view the cited references online, search these references for keywords, and then file my response online while obtaining a receipt that it was, in fact, filed probably saves hours every time I write a response. However, the Financial Services brief doesn’t think that the multitude of ideas that were involved in making all this happen are worthy of a patent. As I mentioned before, it appears that Financial Services thinks that technology stopped evolving after the 1950s.

    BTW: if your model is known and you use it for a new purpose (perhaps in some method), then it should be patentable. Moreover, if you create a new model, perhaps for designing an airfoil, that should also be patentable when claimed as a process or apparatus.

  31. “And how many angels do you think can dance on the head of a pin?”

    Rat, you’re not a physics major?

    link to zyvex.com

    Yes, there’s plenty of room at the bottom. But I guess you already knew that. :-)

    P.S. Rat, while your reasoning may impress Malcolm, it likely won’t impress anyone with real-world experience: models (including fluid turbulence models) can always be a part of method claims (703/2 is the subclass for modeling by mathematical expression (“Subject matter comprising means or steps for representing a physical process or system by mathematical expression”); 703/9 is the subclass for simulating fluid systems).

    US 7,251,592
    15. A computational fluid dynamics (CFD) method for analyzing fluid dynamic performance of an airfoil comprising: determining an estimated laminar separation location of a flow separating from the airfoil; determining a spatial domain for running a *turbulent flow model* for modeling the fluid dynamic performance of the airfoil, the determining of the spatial domain comprising: using an attached flow model, determining a first estimated laminar/turbulent transition location along the airfoil; if said estimated laminar separation location is downstream of said first estimated laminar/turbulent transition location, using said first estimated laminar/turbulent transition location to determine the spatial domain; and if said estimated laminar separation location is upstream of said first estimated laminar/turbulent transition location, using a second estimated laminar/turbulent transition location to determine the spatial domain, the second estimated laminar/turbulent transition location being determined as a constant multiplied by a streamwise position of said estimated laminar separation location and multiplied by an exponent of a momentum thickness Reynolds number associated with said estimated laminar separation location, at least in one instance, said estimated laminar separation location being upstream of said first estimated laminar/turbulent transition location; and running the *turbulent flow model* in the determined spatial domain to determine the fluid dynamic performance of the airfoil.

  32. pds

    I was reacting to the quote about “applied economics” being patentable.

    Any physics theory is a model. All theories are wrong but some are useful.

    Newton’s laws of motion are only approximations which are accurate and useful within certain limits (at least that is what they taught me when I got a degree in physics).

    So far as your airfoil example: suppose I came up with a model not of the optimal quantities but of the drag/lift/weight ration as a function of the parameters you suggest: would that model be patentable? If the physical model is not patentable why should the idea of using a standard technique (simulated annealing, steepest descent, conjugate gradient, Newton’s method or brute force search) to find the optimal combination of parameters be patentable?

    So far as the patentable essence is concerned: it seems to me that when a patent consists of a combination of pre-existing elements it is fair to ask what is the “secret sauce” that makes it so special that it should be patentable?

  33. Rat:

    I’ve got no dog in the fight about Bilski. I only care about the law, as it is being applied in Bilski.

    You should know better than to look for the “new and patentable essence of their claims.” Claims are to be considered as a whole … even MM knows this.

    BTW: To answer your first question, the number is 42.

    Another BTW: Most “models” are not physical phenomena or principles of nature. Instead, models, as they pertain to the natural world, are human-created approximations of physical phenomena.

    For example, perhaps you came up with a model that described an airfoil having an optimal drag/lift/weight ratio based upon certain parameters such as density of material, chord length etc. You could claim the airfoil having parameters that fit your model.

    Another model would be how to determine whether a particular data transaction in a network may not be authorized. Using the model, one could claim a process that detects these unauthorized data transactions. This is one of the concepts within Regulatory Datacorp’s patents.

  34. pds

    Just so we can avoid getting bogged down in irrelevancies, perhaps you could explain to me the patentable essence of the Bilski claims. When you take the parts of the overall method which were standard processes and arrangements what is it they say is the new and patentable essence of their claims?

  35. “… processes that implement the model may be patented, but not the model itself.”

    That’s really very funny. And how many angels do you think can dance on the head of a pin?

  36. “So an effective model of turbulence and phase changes in financial markets are patentable but effective models of turbulence and phase changes in fluid flows are not.”

    Nothing like creating your own strawman and then knocking it down. Must be taking lessons from MM.

    No brief I’ve read is advocating the patenting of a “model.” Devices and processes that implement the model may be patented, but not the model itself. Your statement sounds a lot like MM advocating that software shouldn’t be patented, when in fact, the law is very clear that software, per se, is not patentable, and no one writes claims to software, per se (or at least no one with any experience in the computer arts).

    Also, I’ve seen that the aliens have brought back the real MM (actually, it has been awhile now).

  37. “the actions by these entities is just an attack on the DataTreasury patents, which would likely be held invalid based upon the analysis set forth in their brief”

    The public should support those entities, then, in their efforts to banish those patents and patents of similar ilk.

  38. “RDC’s amicus brief makes the point that applied economics falls well within any reasonable definition of “useful arts.” According to Duffy, statutory subject matter should only limit claims that are directed to abstract ideas, physical phenomena, or principles of nature.”

    So an effective model of turbulence and phase changes in financial markets are patentable but effective models of turbulence and phase changes in fluid flows are not. If that’s the best “conservative patent thought” can do then they should call it a day and leave the playing field before they get laughed at in Court.

  39. “Interesting position by Bank of America, Morgan Stanley, and Wachovia. et al. They all have active IP programs with patents both issued and pending in class 705.”

    I wrote this in the other Bilski thread this morning … the actions by these entities is just an attack on the DataTreasury patents, which would likely be held invalid based upon the analysis set forth in their brief.

  40. “Duffy has firmly established himself as the country’s leading conservative patent thought leader”

    Dennis, with that one sentence you have completed your transition to academia. I hope there’s room left for you to firmly establish yourself as another thought leader. Look out . . . here comes Whealan. He’s got “thought leader” written all over him. The law students, or should I call them thought followers, must be impressed.

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