Professor Collins: In re Bilski: Tangibility Gone “Meta”

By Professor Kevin Emerson Collins (Indiana University Law School – Bloomington) [PDF Version]

In its recently issued en banc majority opinion in In re Bilski, the Federal Circuit articulates a “machine-or-transformation” test for patent-eligible subject matter under § 101 of the Patent Act. Although they are both legitimate questions, this short comment addresses neither whether there is a legitimate statutory basis for this test nor whether Supreme Court precedent should be interpreted so as to mandate (or even support) this test. Rather, it focuses solely on the criteria that the court offers to draw the line between patentable and unpatentable transformations. The Federal Circuit has added a new twist to the tangibility test that has for many years played a role in determining patent-eligibility: the tangibility test has gone “meta.” The tangibility of the formal data that is actually transformed by a method of processing information is not relevant to patent-eligibility, but the tangibility of the things that the data is about—the tangibility of the informational content of the data or the things to which the data refers—now appears to be dispositive.

Bilski sets out a disjunctive two-prong “machine-or-transformation” test for patent-eligible subject matter: “A claimed process is surely patent-eligible subject matter under § 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing.” Slip op. at 10. The opinion declines to elaborate on the implications of the particular-machine prong of the test because the applicants conceded that their claim did not satisfy this prong. Id. at 24. It addresses only the transformation prong. It puts forward a conjunctive, two-prong test that must be satisfied for a method to “transform[] a particular article into a different state or thing” and thus to qualify as patent-eligible subject matter. First, the transformation implicated “must be central to the purpose of the claimed process.” Id. In other words, it must also “impose meaningful limits on the claim’s scope” and not “be insignificant extra-solution activity.” Id. Second, the transformation only qualifies as patent-eligible if it transforms a certain type of “article.” “[T]he main aspect of the transformation test that requires clarification here is what sorts of things constitute ‘articles’ such that their transformation is sufficient to impart patent-eligibility under § 101.” Id. at 24–25. This is the distinction—the distinction between the “articles” that, if transformed, constitute patent-eligible subject matter and the other “articles” that, if transformed, do not constitute patent-eligible subject matter—on which the opinion elaborates at length, id. at 25–32, and on which this comment focuses.

Most importantly for the point addressed here, the Federal Circuit implies in Bilski that there are two different categories of “electronically-manipulated data,” id. at 25, and that the data in each category is a different type of “article” insofar as patent-eligibility is concerned. The data in the first category is an “article” that, if transformed by a method claim, constitutes patent-eligible subject matter, but a method that transforms the data in the second category is not a patent-eligible method.

The first category is comprised of data that represents a “physical object or substance.” Id. at 28. For example, citing In re Abele, 684 F.2d 902 (C.C.P.A. 1982), the Federal Circuit stated that a method that transforms data that “clearly represent[s] the physical and tangible objects, namely the structure of bones, organs, and other body tissues” is a patent-eligible method. Slip. op. at 26.

The second category of data seems to have two distinct subsets. The first subset is data that, as claimed, does not represent anything (or, alternatively, that can represent anything). This data is semantically empty; it is a variable without any specified informational content. Bilski again uses Abele—but this time the claims that the court rejected under § 101—as an example. Id. The fact that methods reciting the transformation of this meaningless (or infinitely meaningful) data are not patent-eligible should come as no surprise to those familiar with the history of patent-eligibility in the last several decades: methods that recite the manipulation of variables without semantic meaning are nothing more than methods that recite mathematical algorithms in the abstract.

The second subset of the second category, however, is likely to raise some eyebrows: it contains data that represents something specific or something in particular, but that something represented is itself intangible. Here, the informational content of the data—the thing in the world to which the data refers—is intangible. The Federal Circuit holds that the method at issue in Bilski is not patent-eligible because it “transform[s]” or “manipulat[es]” data representing “public or private legal obligations or relationships, business risks, or other such abstractions,” which critically is not data “representative of physical objects or substances.” Id. at 28.

The idea that the meaning that the user attributes to the data transformed or manipulated by an information processing method is relevant to patent-eligibility is not a novel feature of the “machine-or-transformation” test announced in Bilski. For example, the “concrete, useful and tangible result” test of State Street Bank required the courts to examine the meaning of the data, variables or “numbers” in the course of determining patent-eligibility. State St. Bank & Trust Co. v. Signature Fin. Group, 149 F.3d 1368, 1373–75 (Fed. Cir. 1998). However, what is new in Bilski is the importance now placed on the physicality of the thing to which the data refers. Thus, the tangibility test has gone “meta”: it is no longer the tangibility of jostling electrons that is of concern (as it was in the early days of patents on computer-executed information processing methods), but the tangibility of the stuff represented by those electrons-as-symbols. In the language of semiotics, the tangibility analysis has shifted from a concern about the tangibility of the signifier—the physical configuration of matter that forms a symbol—to a concern about the tangibility of the signified—the informational content of or the thing represented by the symbol.

There is in my opinion much that needs to be said about this move in Bilski that takes the long-standing concern about tangibility in the patent-eligibility analysis “meta,” transforming it from a concern about a signifier to a concern about a signified. Here, however, I limit myself to raising two initial, narrow questions.

First, the move raises a normative question: Why should we treat information about tangible things in a manner that is categorically different from the manner in which we treat information about intangible things? Having taken its cue from the Supreme Court, the Federal Circuit clearly wants to prevent patent-eligible method claims from pre-empting mathematical “fundamental principles.” Slip op. at 26. However, the most appropriate means to achieve this end would seem to be a focus on the specificity, not the intangibility, of what is meant. Why should the manipulation of data that represents my height (a presumptively physical property of my body) be patentable, yet the manipulation of data that represents my expected longevity (a property that is difficult to classify as a physical one) be unpatentable?

Second, the move raises concerns about administrability. Is data about my expected longevity about something physical, namely my body? If it is, then why isn’t the data at issue in Bilski also about something tangible? The data is after all about a property of lumps of coal, namely their expected future rate of consumption or the legal rights that individuals have with respect to them. Or, to formulate the administrability problem in a recursive manner, what about data that is about the structural qualities of electronic signals? To determine whether a method that manipulates such data is patent-eligible, it would seem again to be necessary to confront the tangibility of an electronic signal—the very question that patent doctrine has been trying to render irrelevant for several decades—but this time with the signal as a signified rather than as a signifier.

39 thoughts on “Professor Collins: In re Bilski: Tangibility Gone “Meta”

  1. I’m thinking that, perhaps the intent of the wording is to allow patents on, for example, a software controlled milling machine that *does* interesting things with it’s target object(s), but not programs that simply stomp on generic data (e.g. web pages, money, etc.).

    Whether or not it ends up actually having that effect is a different question.

  2. Eurodisnae — those are unbelievable crappy claims! It must have taken you forever to find them (LOL!!!!). Total. Frigging. Joke.

    Once again: software examiners are the most pathetically lazy examiners at the USPTO. Clean up your act, people. You are an embarassment to the idea of patents and it’s EXACTLY that kind of crap that has led us to the judicial and adminsitrative whack-a-mole games that have ruined patent law in the United States.

    On the other hand, sometimes over the long run it’s better to hit the bottom hard. Sort of a wake up call, if you will.

  3. “With regard to KSR – does anyone here doubt that, whether or not the standard of obviousness should have been raised, the way that the CAFC did so (by allowing circumvention of TSM) undoubtedly leads to more subjectivity, more use of hindsight, and less consistency in 103 rejections?”

    Yes, I doubt it very much, especially the consistency part. There was zero consistency before. How could there possibly be less after KSR?

  4. Hey, Luke, where do you get “conjunctive or” from? I’ve not heard of such a thing.

    Michel botched this opinion in about 10 ways, and this is one. There is not a single test here with two “prongs.” There are two separate tests. They have no relation to each other. One can be true with affecting the other. Or both can be true. They can be applied in any order. Why does he call this a single test — the machine OR transformation test?

    According to Michel’s “or”, one and only one must be true to get past Bilski type rejections. That’s what “or” means. It means, not both, as in only one. If they are BOTH true, according to Michel’s “or,” the claim fails 101, which is, of course, ridiculous, but, hey, HE wrote the opinion, not me.

    He could have just as easily have said “the machine test and/or the transformation test.” But he didn’t. “Or” is not, under any circumstances, equivalent to “and/or.”

    How many times has the CAFC used the “you get what you say and no more” rule to queer otherwise good claims? But, or course, the judges don’t apply their own rules to their own opinions. Their words mean whatever they want them to mean. This opinion is the Dred Scot of patent law.

  5. The difference between “obvious” and “enablement” on the one hand, and “abstract” on the other, is that in patent law we have at least a frame of reference for the former. Obviously any word you use will be open to some interpretation — language is a symbolic exercise. But for obviousness, we have the PHOSITA standard, plus some specific criteria (e.g., failure of others). Not that that is totally unambiguous (okay, it’s got a LOT of wiggle room), but at least we have some specific starting points. Enablement is similar. Are there vague things about it, absolutely. And could that be improved, absolutely.

    But if the 101 eligibility test was simply left to asking whether something is “abstract,” there is just no specific criterion or frame of reference to work off of at all. The particular problem/scenario/solution “test” doesn’t help much in my view, though it’s better than what Rader offered. Take the Morse claim. One could argue that the problem was communicating at long distances, the scenario was a desire to communicate accurately and reliably at long distance, and the solution was using magnetism-powered machinery. Maybe not specific enough (which would be an indefiniteness issue today) but why is that not a particular problem/scenario/solution? It doesn’t claim, for example, sending letters or using smoke signals or messenger pigeons.

    In the end, specific criteria or at least a frame of reference is needed. The Fed Cir certainly provided that. The argument now should be whether those criteria should be different or modified, not whether criteria should have been adopted at all.

  6. JJL: I’m right with you on the idea of raising the threshold of utility, and of more extensive examination to promote compliance with 102/103.

    However, the idea of “strengthening” 103 is problematic. With regard to KSR – does anyone here doubt that, whether or not the standard of obviousness should have been raised, the way that the CAFC did so (by allowing circumvention of TSM) undoubtedly leads to more subjectivity, more use of hindsight, and less consistency in 103 rejections? The examiners have been given back the power of the “smell test,” and we’re undoubtedly going to receive many more “it LOOKS obvious to me” rejections.

    JJL: As for the definition of “abstract” – how specific a definition do you want? We’re still struggling with (and changing) the meanings of terms like “obvious” and “enablement” (and now “particular!”)… patent law has to use very “meta” language in dealing with several broad classes of ever-changing technology.

    I’ve offered one standard of defining “abstract”: an invention is not “abstract” if it addresses a particular problem that might arise in a particular scenario, and presents a particular solution. By contrast, it is “abstract” if the problem isn’t really set forth; if it is claimed in any imaginable scenario; or if every potential solution to the problem is claimed.

    Samuel Morse attempted to claim “the use of the motive power of magnetism… as a means of operating machinery… to imprint signals upon paper, or to produce sounds… for the purpose of telegraphic communication at any distances.” This includes no particular problem, no particular scenario, and no particular solution… it’s just an idea.

    – David Stein

  7. Can we at least get one thing straight? This isn’t about banning all business method and/or software patents. It’s about drawing the line between patentable and unpatentable (101-wise) software and business methods.

  8. I still don’t understand the logic of the idea that since there are screwy patents out there, 101 eligible subject matter needs to be massaged to bar them. What about everything else? If the 101 utility requirement is being too laxly enforced (which I agree with) then strengthen that. If (as many would agree) the PTO isn’t kicking enough method claims on 103 (whether it’s their fault or not), then strengthen 103 (and some would argue that KSR helped – we’ll see). There’s no reason to make patent eligible subject matter the panacea to end all bad patents. I’m not saying do what Newman (and to some extent Rader) wants to do, i.e., make 101 just nice window dressing for the rest of the Patent Act. But the other extreme also seems silly to me.

    I asked that Mr. Stein (or anyone else really) come up with a definition of “abstract” – it’s telling that no one has done that. Because it’s hard. The Fed Cir’s new test (or SCOTUS’s old test, if you read it the way Fed Cir seems to) may not be your cup of tea – understandably – but there’s got to be something other than just some know-it-when-you-see-it “abstract” criterion that we all know the PTO couldn’t administer.

    In my view, the real culprit is Congress. If you want to bar software patents or business method patents, the way to go is to get Congress to legislate such exceptions like they have with certain nuclear technology. Sec. 101 is so vaguely worded that the mind-numbing 101 case law we now have was inevitable.

  9. Last one, I promise. 7,437,679 – personally I think this one ought to stay good (101-wise) after Bilski.

    1. In a computer system including a display device, a method for presenting a plurality of data items that are associated with personal information from a plurality of different application types and in such a manner as to indicate both the importance and urgency of the personal information, comprising the following: an act of identifying an importance values for each of a plurality of data items, each of the plurality of data items corresponding to a different application program of a plurality of different application program types, and each importance value comprising a value within a first range of values that reflects a relative importance of each corresponding data item relative to an importance associated with at least one other data item; an act of identifying an urgency value for a particular data item of the plurality of data items, the urgency value comprising a value within a second range of values that reflects a relative urgency of the particular data item relative to an urgency of at least one additional data item; an act of assigning a first visual cue associated with the particular data item based on an importance value associated with the particular data item; an act of assigning a second visual cue, which is different than the first visual cue, and that is associated with the particular data item based on the urgency value of the particular data item; and an act of causing the particular data item to be displayed using the first and second visual cues to provide a visual indication as to both the relative importance and the relative urgency of the particular data item, the first and second visual cues affecting display of the particular data item in different ways, wherein the particular data item comprises one of one or more specific data items corresponding to a more general data item and wherein the particular data item is displayed within boundaries associated with the more general data item and wherein the method further includes: dynamically modifying at least one of the first and second visual cues of the particular data item in response to detecting a change in either of the importance value and/or the urgency value of the particular data item; and in response to modifying at least one of the first and second visual cues of the particular data item, the system automatically modifying display of the more general data item in a similar fashion by at least one of: increasing a display size of the more general data item to correspond with an increase in a display size of the particular data item, decreasing the display size of the more general data item to correspond with a decrease in display size of the particular data item, or changing a display color of the more general data item to match a corresponding change in a display color of the particular data item.

  10. Or this, 7,437,718:

    1. A method comprising: receiving into an execution environment input component code and a runtime security policy, wherein the runtime security policy comprises an assignment of rights to the input component code and security checks performed as the input component code is loaded; and generating a call graph of call paths through the input component code simulated in combination with at least one symbolic component representing additional arbitrary code that complies with the runtime security policy, wherein the generating operation comprises: generating a class hierarchy that contains classes of the input component code and symbolic classes that represent classes of the arbitrary code; generating at least one constraint associated with a virtual call in the input component code; evaluating the at least one constraint by a symbolic computation on potential target classes for the virtual call in the generated class hierarchy; generating at least one constraint associated with either a security demand or a security assert in the input component code; evaluating the at least one constraint by a symbolic computation on dynamic permissions of the input component code and on a parameter permission of the security demand or the security assert; and conditionally generating at least one additional constraint associated with one or more instructions located in the input component code after the security demand or assert, responsive to the evaluating operation.

    Let’s play “Spot the Machine or Transformation”

  11. What about this granted claim, Pat No 7,441,186:

    1. A method for organizing a plurality of items into at least one group, comprising: receiving at least one piece of information associated with each of the plurality of items, the at least one piece of information being stored in metadata; converting the at least one piece of information for each of the plurality of items into a numeric value; sorting the numeric values for each of the plurality of items into an ascending array; determining a gap between each adjacent numeric value in the ascending array; determining a median gap for the ascending array; determining an optimum gap for the ascending array based upon the median gap; and organizing the items into at least one group using the optimum gap.

    Not tied to a machine. Is grouping of items a transformation of any sort? Is this a pre-emptive grab of a general abstract principle for grouping items of an unspecified nature?

  12. Night Writer,

    Mooney, and his i1k aren’t burning anything down, they are more aptly hitting their collective thumbs with big hammers trying to get a clue. Mooney has already admitted to being a prosecution poseur. Just here as a rabble rouser. Probably collecting a check from Research in Motion. Unfortunately, Mooney tells his breathless tale replete with sound and fury but, as usual, it truly signifies – nothing.

  13. The problem with this type of decision, e.g. forumlaic tests, is that applicants can go through superficial motions, like adding a particular machine or reciting a physical transformation and make what otherwise might not be, statutory subject matter.

  14. Prof. Collins is on target about the fact that we need to pay attention to this shift from signifier to signified. This shift, however, began long before Bilski. Shameless self-promotion: see an article I wrote back in 2003 pointing out that in the 1980s the CCPA and then the CAFC started wavering back and forth between focusing on the physicality of the claimed subject matter and the physicality of that which is represented by the claimed subject matter, without any apparent consciousness of this fact. See pp. 40-45 of link to ssrn.com

  15. Quote: ‘Bilski sets out a disjunctive two-prong “machine-or-transformation” test for patent-eligible subject matter: “A claimed process is surely patent-eligible subject matter under § 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing.”‘

    That’s a *con*junctive or (i.e. meaning and/or), and not a disjunctive or (i.e. meaning eher.. or).

    Cheers, Luke

  16. “If so, could Bilski’s claims not be recast as a method for maximizing the amount of money in a pile of money? Could not all Business method claims be so cast?

    So then, isn’t this much ado about nothing (or something)?”

    So far as I understand them they’re not able to be recast as a method for maximizing money because they don’t necessarily maximize money. They are a method of hedging risk as I understand it. The two are not the same principles. Go to business school then get back to us.

    Also, no, not all business methods can be recast in such a way. Although, even if they were, the prospective amounts of money in a pile at a time down the road doesn’t seem like a tangible thing at the present, it seems like something that exists only in someone’s mind/plans.

  17. JJL:

    (1) As Lionel notes, the utility requirement is extremely lax in all fields. The only areas where it’s been a significant issue is where a chemical X is proposed, but the applicants describe absolutely no use for X.

    There was definitely a gap between the level of utility required by 101 and the level of “useful, concrete, and tangible” utility required by State Street. With the more stringent test abolished – and replaced with one that has nothing to do with “utility,” but rather with “tying to a particular machine” and/or “transforming a physical article” – it’s questionable whether the requisite threshold of “utility” in the software arts is actually *lower* now.

    (2) Well, what prompted the CAFC to make a sweeping change? I think it was seeing too many badly drafted software patents… of the kind which read:

    “A method, comprising:
    reading some data;
    munging the data; and
    producing munged data.”

    There are *plenty* of bad claims like this floating around. And I am a strong proponent of more clearly drafted claims.

    But the CAFC chose to knock out lame claims like this by requiring the method to be tied to either a machine or involve a physical article. I think a much better solution would have been a heightened utility requirement – e.g., raising the threshold of the State Street test.

    – David Stein

  18. JJL, can you provide one example where utility was successfully challenged outside the chemistry and biotech fields? Generally utility is a minimal threshold outside those areas.

  19. To respond to two points made by Mr. Stein:

    (1) Lets say that one could draft a claim that satisfies the machine-or-transformation test (putting aside that elephant in the room for the moment) but is not “useful,” as you posit. Well, Bilski would seem to say it is patent eligible subject matter. Problem is, sec. 101 has a separate utility requirement, as the Bilski opinion points out. So the claim would be kicked on that basis. What’s the problem then?

    (2) You, like Rader, seem to think that the only test that is needed is whether a claimed process is “abstract” or not — that asking that question solves all the problems and is completely unambiguous. So let me ask you, how do you tell if a claim is “abstract”? We all may or may not agree with the Fed Cir’s attempt at answering that question, but I think many will agree that some attempt was necessary.

  20. Is money physical?

    If so, could Bilski’s claims not be recast as a method for maximizing the amount of money in a pile of money? Could not all Business method claims be so cast?

    So then, isn’t this much ado about nothing (or something)?

  21. Re “Can the USPTO be relied on to apply the decision rationally and/or consistently?”

    I actually managed to keep a straight face while I typed that the first time round…

  22. “Every piece of this claim is not only abstract, it’s INTENDED to be physically unmanifest. I think that’s what SCOTUS was trying to say.”

    Then why didn’t the CAFC simply cite the “abstract ideas” doctrine?

    Of course, that’s what has most of the patent bar scratching its head. We would have been content with an expansion of the types of software inventions that are too “abstract” to satisfy the requirements for patent protection. In fact, the most critical points of the Bilksi holding (“public or private legal obligations or relationships, business risks, or other such abstractions…”) speak directly to this point.

    But instead, the CAFC decided to shift the inquiry away from whether the invention was sufficiently non-“abstract,” and to fall back on safe ground by reciting – almost by rote! – the last major SCOTUS op. Never mind the dust that had to be blown off of it since its pronouncement in, er… 1981.

    My guess is that the CAFC has taken a lot of heat from patent non-believers over State Street, and it wanted to distance itself from that case as much as possible. But it’s interesting that many of the arguments trotted forth would more comfortably fit a “useful, concrete, and tangible” analysis than the semantically empty “tied to an apparatus/transformation of physical article” tests of Diehr.

    – David Stein

  23. “Can the USPTO be relied on to apply the decision rationally and/or consistently?” I can hear laughter from here. I would also like to point out that the claim never recites an “electronic signal” or a “computer” or “electrons” or a “representation”. The only piece of the claim that could be interpreted as a physical article is “commodity”. The decision says that the purpose is to restrict patents from claiming methods that can be performed by the human mind alone. Do commodities traders who “purchase commodities” actual purchase and physically possess the commodities they buy? Does a dump truck full of pork bellies roll up on their driveway to deliver the goods? Every piece of this claim is not only abstract, it’s INTENDED to be physically unmanifest. I think that’s what SCOTUS was trying to say. Wall Street is never never land and the only thing this method does for the users is move around abstract bits of values like the computer playing tic tac toe in War Games. Save Ferris.

  24. “The more you tighten your grip, Dudas, the more business method patents will slip through your fingers.”

    Actually, I’m wondering if Bilski has actually made patenting some types of software *easier* than under State Street.

    Under State Street, the key test, simply put, was utility. “Useful, concrete, and tangible” were simply three synonyms for “practical” – i.e., methods were patentable as long as they had some sort of demonstrable value, such as a particular solution to a particular problem. This requirement was (ostensibly) supplemental to the ordinary “utility” requirement, which is per se satisfied if a statutory class is properly recited.

    Bilski replaces the State Street test with transformation. The CAFC’s clear intention was to try to tighten the scope of allowable method claims to those that have some sort of physicality. (Yes, the CAFC vociferously denied it – but, clearly, the test involves a transformation of a *physical* article [or representation thereof] or ties to a *physical* apparatus, right?)

    Certainly this tightening knocks out some more conceptual inventions, and changes the style in which we draft claims. But might it also make patentable a whole range of methods that were unpatentable under State Street? – namely, those that are “tied” to a particular machine or “transform” an article, but not in a “useful, concrete, and tangible” way?

    How about this: “A method of rearranging data representing an X-ray of an individual in a memory store organized according to sequential addressing, the method comprising: [various data-shuffling steps that result in a tesselation of the data.]”

    That claim passes both prongs of the Bilksi/Diehr test – it’s a transformation of data representing a physical article (see Abele), and it’s tied to a particular apparatus (a particularly addressed memory store.) But it’s not really “useful,” is it? It doesn’t solve any particular problem, and it likely doesn’t have any demonstrable utility – as would have been required by State Street.

    Presumably, the CAFC will resurrect the ghost of the “useful, concrete, and tangible” test by applying it in spirit. They’ll likely trot out an expanded version of the “preemption” principle – e.g., if the invention doesn’t have a “useful, concrete, and tangible” application, then it likely “preempts” every application.

    But this will simply highlight the intellectual dishonesty in the CAFC’s intent in stuffing the software patent genie back into the bottle… and in further denigrating the utility of 27 years of incredible software innovation that followed the circa-1981 test that they deem to apply today.

    – David Stein

  25. >Judge Rich is the one with the nails on the >coffin.

    You can bet that Judge Rich is not resting in peace with the likes of Mooney, 6000, and the rest of the mob burning down the patent statutes.

  26. Is an on-screen item an “article” Eurodisnae asks? Well, at least in the European Union, you can have a design patent certificate on it. Maybe you want to frame that certificate, and display it alongside the certificate of issue of your European utility patent on the UI.

  27. Nice to see a cogent analysis from Prof Collins. This is clearly the nub of the decision. But surely the court could have been a bit more helpful in drawing the bounds that they set out to define.

    On page 25, they posed the key question:

    “”The raw materials of many information-age processes, however, are electronic signals and electronically-manipulated data. And some so-called business methods, such as that claimed in the present case, involve the manipulation of even more abstract constructs such as legal obligations, organizational relationships, and business risks. Which, if any, of these processes qualify as a transformation or reduction of an article into a different state or thing constituting patent-eligible subject matter?”

    But they went on to answer it only within a very limited frame of reference.

    Take user interface patents concerning features of interactive screen displays, of which there are many (and which in Europe are consistently recognised as patent-eligible “technical” subject matter). If the data being manipulated by a method relates to items of on-screen UI furniture, those items, as displayed, themselves have a physical aspect as visible symbols on the screen, but the data and/or processes that the symbols represent may be highly abstract. So where do they stand under the test, particularly if a general purpose computer is not a “particular machine”?

    I would like to think that the practical functionality of the UI would qualify the on-screen items as relevant “articles” in themselves, but that has to be based on a fairly nuanced interpretation of Bilski. Can the USPTO be relied on to apply the decision rationally and/or consistently?

  28. The short answer: Bilski is a return to the obscure tests mentioned in Gottschalk v. Benson and ostensibly overruled in Diamond v. Diehr as noted in the Rader dissent.

  29. 4th paragraph reads: “The first category is comprised of data…” should be “The first category comprises data…”

  30. Leather, might that “fix” be with claims that have something in common with claims for Europe, where they get issued if they correspond to the non-obvious solution to an objective technical problem? If so, all’s well with the world. We’re all (except Greg Aharonian) on the same page now, including dissenting Judge Mayer, who wants to see patents confined to the “useful arts” that is, to the “all fields of technology” of TRIPS.

  31. “To all those zombies who make a living off writing and prosecuting business method and software patents, I really hope you’re enjoying the banquet. Soon the coffin will be nailed shut and the feast will be over.”

    Naaaahhhhh…. We’ve already figured out how to claim around Bilski for MOST of our stuff. For stuff already issued that doesn’t pass muster under Bilski, we can file reissues or perhaps add claims in a continuation, if one is pending.

    Judge Rich is the one with the nails on the coffin.

  32. To all those zombies who make a living off writing and prosecuting business method and software patents, I really hope you’re enjoying the banquet.

    Soon the coffin will be nailed shut and the feast will be over.

  33. “In the language of semiotics, the tangibility analysis has shifted from a concern about the tangibility of the signifier—the physical configuration of matter that forms a symbol—to a concern about the tangibility of the signified—the informational content of or the thing represented by the symbol. ”

    Thank god for that.

    “Why should the manipulation of data that represents my height (a presumptively physical property of my body) be patentable, yet the manipulation of data that represents my expected longevity (a property that is difficult to classify as a physical one) be unpatentable?”

    You can rest easy, neither manipulation of data is likely to be patentable. A transformation on the other hand…

    “The data is after all about a property of lumps of coal, namely their expected future rate of consumption or the legal rights that individuals have with respect to them.”

    That’s not a property OF COAL, that’s an abstract property GIVEN TO COAL BY PEOPLE. k?

  34. They’ve actually gone meta-meta . . . — because since representations of “body tissues” pass muster, then unless one is a believer in good old fashioned Cartesian dualism, information stored and manipulated in the brain is completely encompassed by physical tissue — not some non-physical ether.

    But apparently if the information that is stored in the brain tissue represents something that is ultimately non-physical, then it does not pass muster. But wait — for any concept like “call options” that only exists in human brains, we get an infinite regress, and they must therefore be tangible by the physical tissue argument . . . whoops, doesn’t leave much that isn’t eligible . . .

  35. It seems to me that in the Court’s aversion to saying that they were wrong in the past regarding a decision as to whether or not a given claim was statutory, they’ve developed a “ transformation test” that simply won’t stand up to scrutiny.

    Professor Collins is right. Every financial product or process can ultimately be shown to represent something physical. If Bilski counsel had known beforehand that that was the test, they certainly could have framed their arguments to show that their claims met it. Particularly if they had been backed up by technical experts who could have explained to the Court exactly what an “option” was.

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