Guest Post: The Applied/Abstract Distinction is the Key to §101 Patentability

Guest Post by Polk Wagner (Professor at the University of Pennsylvania School of Law)

Mark Lemley, Michael Risch, Ted Sichelman, and I have authored an amicus brief in the Bilski v. Doll case currently pending before the US Supreme Court. (Get the full brief here [pdf].) In that brief, we argue that the Court's precedents establish that the key to eligible subject matter is ascertaining whether an idea is claimed as applied–in which case it is eligible for patentability (assuming it is not a natural phenomenon or law of nature)–or merely in the abstract–in which case it is not.

We start with the proposition that while the range of subject matter available for patenting is very broad, it is not unlimited. But the restrictions imposed by the Supreme Court, we think, have not focused on the technology, form, or physicality of the claimed invention–the critical mistake made by the Federal Circuit in Bilski. Rather, the Court has uniformly recognized that the key to eligible subject matter is ascertaining whether an idea is claimed as applied, or claimed in the abstract.

This applied/abstract distinction has a long history in Supreme Court caselaw. It can be most clearly seen in the O'Reilly v. Morse case from 1854, where the Court invalidated a claim to all communication by electrical signal as abstract, but allowed a claim to the application of the communications method to stand. 56 U.S. 62, 112-21 (1854). That is, where Morse claimed the idea of communication by electrical signal, the claim was disallowed. But the Court did uphold Morse's claim to a system (e.g., "Morse Code") that applied the communication-by-electricity idea in a practical, concrete way.

One can discern the applied/abstract thread throughout twentieth-century Supreme Court decisions involving §101 subject matter. In Mackay Radio, the Court upheld a claim to a mathematical principle (related to the reception of radio waves) as applied to an antenna, noting that "[w]hile a scientific truth, or the mathematical expression of it, is not patentable invention, a novel and useful structure created with the aid of knowledge of scientific truth may be." 306 U.S. 86, 94 (1939). In Gottschalk v. Benson, the Court denied patentability to an "abstract and sweeping" claim: the mathematical conversion of binary coded decimals into pure binary format. 409 U.S. 63, 66-67 (1972). And finally, in Diamond v. Diehr, the applied/abstract approach drove the analysis–in upholding the claims, the Court noted that the subject matter was not "directed to a mathematical algorithm or an improved method of calculation but rather recited an improved process for molding rubber articles by solving a practical problem which had arisen in the molding of rubber products." 450 U.S. 175, 181 (1981) (emphasis added). Indeed, in Diehr, the Court makes our argument for us:

It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection. . . . Arrhenius' equation is not patentable in isolation, but when a process for curing rubber is devised which incorporates in it a more efficient solution of the equation, that process is at the least not barred at the threshold by §101.

Id. at 187-88 (emphasis in original).

We also argue that echoes of this applied/abstract distinction can be seen in the related-but-distinct caselaw considering the patentability of products of nature. Here, the Supreme Court has repeatedly emphasized in this context that the patent law is designed to protect applications of human ingenuity, not simply "natures' handiwork." Thus, while a man-made organism is eligible for patentability, see Diamond v. Chakrabarty, 447 U.S. 303, 310 (1980), a natural bacterium is not, see Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 131 (1948). The boundary here is neither the form of the invention nor its ability to transform nature; instead the analysis turns on whether the patent claims describe the application of human knowledge to a practical end. In this way, a claim to an abstract idea is like a claim to a product of nature: unmoored to real-world applications of human inventiveness, and thus ineligible for patenting.

Finally, we note that the applied/abstract analytic framework nicely harmonizes Section 101 with Section 112's enablement requirement. Much like Section 101, Section 112 safeguards the essential function of the patent system: the dissemination of real-world, practical human knowledge. Claims to abstract mathematical concepts (like claims to natural products or physical phenomena) violate this tenet, by failing to demonstrate that the inventor is adding to the storehouse of useful, practical human accomplishment. (Indeed, the subject matter and enablement requirements were formerly part of the same statutory section. Patent Act of 1836, Ch. 357, 5 Stat. 117, § 6 (July 4, 1836).)

In sum, we argue that the patent statutes were wisely drafted with an expansive vision of patentable subject matter. Efforts to graft judicially created limitations onto that expansive scope in the past have proven fruitless and indeed counterproductive. This Court should not impose a requirement that patentable inventions require a machine or the physical transformation of some material. It should instead maintain the rule that patents are available for anything under the sun made by man, including discoveries of ideas, laws of nature, or natural phenomena so long as they are implemented in a practical application. In short, the test should be as it has been: where an idea is claimed as applied, it is eligible for patentability, but if it is claimed merely in the abstract it is not.

257 thoughts on “Guest Post: The Applied/Abstract Distinction is the Key to §101 Patentability

  1. “Are you saying your teachers taught you useless things?”

    My teachers taught me a sht ton of useless things Les. The only thing of use they really did for me was hand me a diploma and write a recommendation. I could have read books and worked the simple equations I use every once in a blue moon to tell an attorney what is going on. If I had gone to work on an oil well in the middle of the desert things wouldn’t be much different.

    “6, look through previous posts. I have given you two journal aritcles. One about J. Rich Assault on the Citadel. And another journal article on why information science should be used. Plus, Bilski holds that if a represented object is transformed that this is eligible for patentability. The fed. cir. just seems to want objects that they can understand to be represented and transformed for it to count. What nonsense.”

    Like I said, you never have anything worthwhile to say on the issue. “why information science” *should* be used. Ain’t nobody give two shts about what some computer “scientists” made up. And especially not judges. Thank god for it. We understand that they’re making up abstractions for the stuff they dabble in. No biggie. Doesn’t mean it is patentable. Assault on the Citadel was the biggest waste of an article I’d read in a long while when I read it a long time ago. Bilski said that some of those may be patentable and they may.

    Bottom line, nobody with authority has officially said jack about it, except for Bilski’s implication that pure information transformation doesn’t “count” and you’re not going to get past the threshold anytime soon. Sorry bucko.

  2. >>It is only in the application of the result >>that one might find use.
    Yes. And a nut and bold are completely useless until they are used to make something. They should not be eligible for patents.

    Now 6, I met your threshold requirement, so please proceed with your explanation.

  3. Les I know a sht ton of equations etc. yet they aren’t that useful to me, I’ve not even made a million dollars in my life so far. I haven’t even made any big discovery. I could sit here an work equations all day long and get nothing done, at all. Working the equation, by itself, is not useful. It is only in the application of the result that one might find use.

    If this is too far above your head, you’re simply hopeless.

  4. Les,

    Semantic games aside, let me take a different tack.

    You are engaging in hindsight reconstruction when you say “if you can use that information, the information must be useful.”

    The fact of the matter until a use is derived there is no invention. There are lots of physical relationships of which you are unaware (and of which I am unaware.

    String theory, for example, has no inherent usefulness and lots of scientists study it.

    E=mcc is only useful once you figure out something to do with it.

  5. ” Whatever –you use that information– for is what should be patentable.”

    If you can use that information, the information must be useful.

    Q.E.D.

  6. Fire? Maybe, although I lean toward no. Method of creating fire, certainly

    Wheel? Yes – tool/technology

    Abbacus? – yes – tool/technology

    Method of using fire? – yes -depends on purpose.

    Method of using wheel? – yes -depends on purpose.

    Method of using abbacus? – yes -depends on purpose.

  7. NWPA

    “So calculating how long it will take for an object to fall is not useful? Calculating where a cannonball will fall is not usefuL? Calculating where to point a anti-aircraft gun to shoot down a V1 rocket is not useful? Calculating the force that a rock will hit a windshield at 60 mph is not usefuL?”

    How do you do each of the preceding? Certainly physical knowledge is a prerequisite, but hardly all this necessary. More precisely:

    “Calculating how long it will take for an object to fall is not useful?”

    For what? Why is that information useful absent any other facts? Please enlighten me.

    “Calculating where a cannonball will fall is not usefuL.”

    Of course it is. But Newton’s modeling does not get you this. From the rleationships Newton discovered, he and you and I can calculate the range a cannonball will travel, but the relationship itself does not tell you this.

    This is the difference between science and technology I was trying to articulate earlier. It seems so obvious and apparent to me, so I may not be communicating my ideas as well as I could be.

    “Calculating where to point a anti-aircraft gun to shoot down a V1 rocket is not useful?” See my response to the cannonball question.

    “Calculating the force that a rock will hit a windshield at 60 mph is not usefuL?”

    For what? To design a better windshield or to avoid rocks or what? Whatever you use that information for is what should be patentable.

    Do I need to explain more?

  8. >>mountain of evidence suggests that Malcolm >>Mooney

    I think he is a computer program someone wrote. He has been identified with a persistence ignorance problem which leads me to believe his learning module was left out.

  9. The mountain of evidence suggests that Malcolm Mooney doesn’t like money and wants to be poor. He bristles at the idea of one comrade making more than another comrade.

    How sad.

  10. Would claims to these likely satisy the 101 eligible subject matter requirement?

    Fire?

    Wheel?

    Abbacus?

    Method of using fire?

    Method of using wheel?

    Method of using abbacus?

    Why or why not?

  11. “Ethics Complant filed against J. Moore for accepting a salary from the federal government for performing services that J. Moore has held to be not useful.”

  12. >>Empirical models as well as theoretical models >>should not be patentable as they have no >>inherent usefulness other than understanding >>of the world around us.

    So calculating how long it will take for an object to fall is not useful? Calculating where a cannonball will fall is not usefuL? Calculating where to point a anti-aircraft gun to shoot down a V1 rocket is not useful? Calculating the force that a rock will hit a windshield at 60 mph is not usefuL?

  13. NWPA,

    Empirical models as well as theoretical models should not be patentable as they have no inherent usefulness other than understanding of the world around us.

  14. Newton’s laws of motion may have been heuristic, but they were not a method. A heuristic representation may be correct (now that I have gone and looked up heuristic). Calculus may be a heuristic method, but as I stated previously, I believe calculus should be patentable like a hammer or a drill would be.

  15. “Our brain is making rules about the world. We are information processors. Scientist are figuring out ways for us to represent the world.”

    None of those are patentable.

  16. “Judge Moore writes that generating an opinion of the Federal Circuit is mere post solution activity.”

  17. >> It is a not a heuristic methoNewton’s laws of >>motion are also an attempt to describe what is >>observed.

    >>When we are simply describing phenomena >>observed in nature, or even attemting to >>describe phenomena found in nature, it should >>not be patentable, because the scientist did >>not invent anything.

    Well, sorry, but you are very wrong. First, Newton invented a way for us to reprsent and think about the world. Newton mass body abstraction is an invention of Newton’s. Newton’s equations are heuristics as Eienstein illustrated.

    The way to think about this is: Our brain is making rules about the world. We are information processors. Scientist are figuring out ways for us to represent the world.

  18. “please identify how any of those rleationships are inherently useful”

    You were taught them. Surely your teachers taught you there inherent usefulness. The question is too absurd for me to bother with.

  19. By the way Les, most of the facts you learn in school are not inherently useful? Were you aware of that?

    And there is nothing wrong with that as long as you can think critically and know where to go to get the information you require.

  20. Les,

    My point was those concepts are not patentable either. Also, I see you are avoiding the question, please identify how any of those rleationships are inherently useful.

  21. “We know it like we know about gravity and the acceleration of an object is equal to the sum of the forces on that object divided by its mass. I was also a physics major because I liked science.”

    You mean you know it because you were taught it?

    Are you saying your teachers taught you useless things?

    It would appear so. Maybe you can get your money back.

  22. Les,

    We know it like we know about gravity and the acceleration of an object is equal to the sum of the forces on that object divided by its mass. I was also a physics major because I liked science.

    My previous slur aside, I will try to be plainer. There is a difference between SCIENCE and TECHNOLOGY. Technology is the application of science to solving a problem.

    If the usefulness of E=mcc is so obvious, please enlighten me.

  23. NWPA, I could be more precise. It’s a representation of a physical relationship using the language of mathematics.

    Newton’s laws of motion are also an attempt to describe what is observed. So again, no invention – no INHERENT usefulness. It is a not a heuristic method to understand and compute things. I forget exactly what the mass body abstraction refers to, so I won’t comment on that.

    Now, if you had referred to calculus itself, I would say that calculus is patentable, because it (like all of mathematics) is a tool to compute and understand things.

    When we are simply describing phenomena observed in nature, or even attemting to describe phenomena found in nature, it should not be patentable, because the scientist did not invent anything.

    On the other hand you have someone like Thomas Edison who was not a scientist in any way, shape, or form, but who who actually created new technologies through trial and error and applying the knowledge gleaned from actual scientists to create his inventions.

  24. “E=mc^2 (or more precisely E^2 = p^2c^2 + m^2c^4)is found in nature. Einstein did not create it, he just figured it out.

    As others have said, the relationship does not enable anything on it’s own, if that helps. It does not even enable you to extract energy from matter. All it does is tell you the theoretical energy able to be extracted from matter (which in any real world system would never be perfectly extracted anyway). ”

    Yeah so, whats your point?

    “There is nothing inherently useful about physical relationships. Les has yet to identify any usefulness. ”

    Why do I have to identify any usefulness? Isn’t it obvious that it is useful?

    Why do you even know about the formula if its not useful? As I pointed out earlier, the argument against it’s patenablity is that it is TOO useful. “Granting a patent would preclude all uses”..blah blah blah…In effect only marginally useful discoveries are worth of a patent. Earth shattering discoveries like E=mCC aren’t worth… Paaaaleeeze

  25. Good headline for an academic wanker:

    “Federal Circuit (SCOTUS) holds that a machine that performs the duties of a judge (justice) is not eligible for patentability.”

  26. Lionel Hutz >>=mc^2 (or more precisely E^2 = >>p^2c^2 + m^2c^4)is found in nature. Einstein >>did not create it, he just figured it out.

    What about Newton’s law of motion? Or the mass body abstraction? Do they exist in nature? Or are they heuristic methods that we are creating so that we can understand and compute things?

    Exist in nature: what in the world does that mean? And does information exist in nature?

    And, are people part of nature? What about a car?

  27. “If you’re just going on ‘natural law’, try: “a method for cacluating depreciation of a purchased item comprising averaging the purchase cost and the replacement cost of the item over the expected lifetime of the item”"

    There is nothing natural about the concept you posted. It’s a purely nontechnical method and I can entertain debate about whether it should be patentable or not, but it is not the same as mcsquared.

    There is nothing inherently useful about physical relationships. Les has yet to identify any usefulness.

    I am not sure whether Les is simply engaging in an intellectual exercise or bit of trolling or he is really as dense as his persistence suggests.

  28. Les,

    E=mc^2 (or more precisely E^2 = p^2c^2 + m^2c^4)is found in nature. Einstein did not create it, he just figured it out.

    As others have said, the relationship does not enable anything on it’s own, if that helps. It does not even enable you to extract energy from matter. All it does is tell you the theoretical energy able to be extracted from matter (which in any real world system would never be perfectly extracted anyway).

  29. I didn’t see in your post probably the biggest sin of Goldman Sachs. We the tax payers pailed out AIG which then gave about $25 billion to Goldman Sachs for thier credit default swaps.

    You have patents wrong though. MM. Without patents the small guy is road kill.

  30. >>NWPA, btw, where’s mah spankin’? Can’t get >>past the threshold inquiry? A pity. :(

    6, look through previous posts. I have given you two journal aritcles. One about J. Rich Assault on the Citadel. And another journal article on why information science should be used. Plus, Bilski holds that if a represented object is transformed that this is eligible for patentability. The fed. cir. just seems to want objects that they can understand to be represented and transformed for it to count. What nonsense.

    Each time before you post, re-read all your previous posts. This may help you.

  31. “”Determining value X by doing math on value Y” is not a patent eligible transformation. “\

    This is a silly rejoinder on many levels. First, The proposed claim does not recite determining a random value X. It recited determining a very specific value, energy releasable from an object.

    Second, even the Bilski court found claims such as that proposed to be patent eligible.

    The Bilski court recognized that the broad claim at issue in Abele was not patentable because it “–did not specify any particular type or nature of data—; nor did it specify how or from where the data was obtained or what the data represented.”

    In the proposed claim the type and nature of data is clearly specified as is where the data was obtained AND what it represents.

  32. “Sizzla, that’s a silly rejoinder. Stars don’t caclute anything. Les didn’t claim ‘a method of releasing energy’.”

    Thanks interloper.

  33. Sizzla, that’s a silly rejoinder. Stars don’t caclute anything. Les didn’t claim ‘a method of releasing energy’.
    E=mc^2 is exactly where this argument should sit. If you maintain (as I do) that this should not be patentable, it is incumbent on you to propose a test which excludes this. If you’re just going on ‘natural law’, try: “a method for cacluating depreciation of a purchased item comprising averaging the purchase cost and the replacement cost of the item over the expected lifetime of the item”. I don’t think that should be patentable. But I’d like a clear test.

    And, as an aside, you might want to consider that the purpose of the patent system is not necessarily defined by the preamble to the US constitutional clause. Patent systems have been around longer than the USA has.

  34. “Determining value X by doing math on value Y” is not a patent eligible transformation. Adding old steps doesn’t make the determination patentable. Perhaps put the determination elsewhere in the process. But processes that yield only “numbers” or “prices” or “profits” or “definitions” are abstractions. I’d add “recommendations” to that list as well. Patently meaningless.

    Note that properly claimed articles of manufacture that yield such information could be patentable, provided they aren’t claimed functionally (i.e., claimed essentially as means for performing the unpatentable process).

  35. clue-Les said:
    ‘A method for determining energy releasable from an object, the method comprising:

    determining a mass of the object;
    multiplying the mass by the speed of light squared, thereby determining the energy releasable from the object.’

    This method has been performed by inanimate objects (stars) since the beginning of time. If E=mc^2 is a fundamental law of the universe, then Einstein didn’t invent that relationship. He could invent and patent a practical application making use of the relationship.

  36. It’s not always easy to accept the reality of what we now routinely allow these people to get away with; there’s a kind of collective denial that kicks in when a country goes through what America has gone through lately, when a people lose as much prestige and status as we have in the past few years. You can’t really register the fact that you’re no longer a citizen of a thriving first-world democracy, that you’re no longer above getting robbed in broad daylight, because like an amputee, you can still sort of feel things that are no longer there.

    But this is it. This is the world we live in now. And in this world, some of us have to play by the rules, while others get a note from the principal excusing them from homework till the end of time, plus 10 billion free dollars in a paper bag to buy lunch. It’s a gangster state, running on gangster economics, and even prices can’t be trusted anymore; there are hidden taxes in every buck you pay. And maybe we can’t stop it, but we should at least know where it’s all going.
    ————————

    Matt Taibbi, ladies and gentlement.

    David Kappos knows where the PTO is going. We can trust him, right?

  37. Excellent article in Rolling Stone re Goldman Sachs, bubbles, and methods of “profiting”.

    link to rollingstone.com
    ———————
    Another practice Goldman engaged in during the Internet boom was “spinning,” better known as bribery. Here the investment bank would offer the executives of the newly public company shares at extra-low prices, in exchange for future underwriting business. Banks that engaged in spinning would then undervalue the initial offering price — ensuring that those “hot” opening-price shares it had handed out to insiders would be more likely to rise quickly, supplying bigger firstday rewards for the chosen few. So instead of BullshXt.com opening at $20, the bank would approach the BullshXt.com CEO and offer him a million shares of his own company at $18 in exchange for future business — effectively robbing all of BullshXt’s new shareholders by diverting cash that should have gone to the company’s bottom line into the private bank account of the company’s CEO.

    In one case, Goldman allegedly gave a multimillion-dollar special offering to eBay CEO Meg Whitman, who later joined Goldman’s board, in exchange for future i-banking business. According to a report by the House Financial Services Committee in 2002, Goldman gave special stock offerings to executives in 21 companies that it took public, including Yahoo! cofounder Jerry Yang and two of the great slithering villains of the financial-scandal age — Tyco’s Dennis Kozlowski and Enron’s Ken Lay. Goldman angrily denounced the report as “an egregious distortion of the facts” — shortly before paying $110 million to settle an investigation into spinning and other manipulations launched by New York state regulators. “The spinning of hot IPO shares was not a harmless corporate perk,” then-attorney general Eliot Spitzer said at the time. “Instead, it was an integral part of a fraudulent scheme to win new investment-banking business.”

    Such practices conspired to turn the Internet bubble into one of the greatest financial disasters in world history: Some $5 trillion of wealth was wiped out on the NASDAQ alone. But the real problem wasn’t the money that was lost by shareholders, it was the money gained by investment bankers, who received hefty bonuses for tampering with the market. Instead of teaching Wall Street a lesson that bubbles always deflate, the Internet years demonstrated to bankers that in the age of freely flowing capital and publicly owned financial companies, bubbles are incredibly easy to inflate, and individual bonuses are actually bigger when the mania and the irrationality are greater.

    Nowhere was this truer than at Goldman. Between 1999 and 2002, the firm paid out $28.5 billion in compensation and benefits — an average of roughly $350,000 a year per employee. Those numbers are important because the key legacy of the Internet boom is that the economy is now driven in large part by the pursuit of the enormous salaries and bonuses that such bubbles make possible. Goldman’s mantra of “long-term greedy” vanished into thin air as the game became about getting your check before the melon hit the pavement.
    ————-

    Let’s inflate the business method patent bubble! Let’s allow the patenting of algorithms and thoughts, too! And while we’re at, let’s get rid of that terrible KSR! What harm could possibly come from giving two decades of exclusive rights to anyone who comes up with ANYTHING that a PTO Examiner can’t prove isn’t new?!?!? I mean, c’mon! Deregulation — it’s for THE PEOPLE!

  38. Les I have a totally awesome explanation that is way better than step’s. It is worth at least a thousand, I’m giving you a bargain close out price!

  39. Doh: “The USPTO is within the Department of Congress.”

    You came so close to making an excellent rejoinder but failed miserably in the execution.

  40. The point was made that

    “Einstein was working as a clerk in the Patent Office at the time he made his discovery…”

    Not the US Patent Office, of course.

  41. “The fact is that ‘making money’ should not be a recognized utility for 101 purposes. The promotion of ‘making money’ is the role of the Department of Commerce.”

    The USPTO is within the Department of Congress.

  42. “MY OPINION is that ‘making money’ should not be a recognized utility for 101 purposes.”

    Fixed your comment, Malcolm.

  43. “Sure you do, Les. Then again, you’re a Sunner and as we’ve seen you’ll make *any* argument to justify the patentability of any object or method that’s “under the sun and made by man.”"

    You addressed these comments to the wrong poster.

  44. “I know you may see things differently from North Korea, or whatever socialist/communist state it is you live in, but personally I find making money very useful.”

    Sure you do, Les. Then again, you’re a Sunner and as we’ve seen you’ll make *any* argument to justify the patentability of any object or method that’s “under the sun and made by man.”

    Nobody will deny that methods of thinking about all kinds of plans are “very useful.” Yet nobody has ever seriously questoined the fact that such methods are not eligible for patent protection.

    The fact is that “making money” should not be a recognized utility for 101 purposes. The promotion of “making money” is the role of the Department of Commerce. The promotion of *the useful arts* is the role of the Patent Office, which issues patents, from which money can be made if the patentee so desires. Increasing one’s personal wealth is not a “useful art,” just as wiping snot underneath one’s chair is not a “useful art.” One may find it useful to do, for all manner of reasons, but the utility should not be recognized by a Patent Office for reasons that should be clear to any sincere and hygienic adult.

  45. Step back, the fact that it may not be a fundamental principle but only an approximation is a point I made many posts ago. I also pointed out that it may not be a fundamental principle but only the culmination of several (I think I suggested 6) fundamental principles.

  46. Step back:

    I use shorthand as I am sure that the practitioners her can formulate the claim I mean based on the comments I provided; something along the lines of :

    A method for determining energy releasable from an object, the method comprising:

    determining a mass of the object;
    multiplying the mass by the speed of light squared, thereby determining the energy releasable from the object.

  47. Les aks:

    “How is E=mc^2 not part of the progress of science?”

    Answer: While you have good intentions Les, your question reads to patent practitioners here as a nonsequitor.

    A patent claim is a single sentence structure that typically begins with a phrase like: “What is claimed is: 1. A process comrpising:” followed by recitation of one or more steps (actions).

    The equation, E=mc^2 is not an action.

    You might have said, the method of using the equation, E=mc^2.

    One of many problems with such a claim (aside from over-breadth) is that pre-empts all free speech as well as free thought regard that equation, expressed as it is. Of course a clever design around artist may begin to use E=mc^(6/3), which clearly is not exactly the same equation. But I digress here.

    Moreover, there is a caution about confusing the map for the territory. E=mc^2 is our current map of how we currently belive the territory of the Universe is put together. But we can be wrong as we have been many times before. Maybe it’s really E=mc^(2.00001). It’s merely a mathematical model. It is not reality itself.

  48. Merely an observation that I believe some may find as being odd.

    As I read the the brief in which Mr. Risch participated I was struck by similarities it bears with the one crafted by Patent Hawk (on behalf of the State of Oregon).

    My “take way” from each is that while 101 is anything but a model of clarity, it should be interpreted as a “door” having a prominent “welcome mat” inviting entry.

    101 thus out of the way (except, of course, in those very few instances articulated by the Supreme Court [which instances, quite frankly, I have in many situations a very difficult time getting my arms around]), the focus should turn on the classic “Big Four” of new, useful, non-obvious and enablement.

    Mr. Risch’s brief articulates a legal path based on precdent, and Patent Hawk’s a path based to a lesser degree on precedent, but with a healthy dose of real world practicality.

    In a way it seems to me that the arguments would be more effectively presented if somehow the two briefs were merged into a single document.

  49. MaxDrei wrote:

    “But if a claim does indeed succeed in pre-empting an “entire field” then it must be refused as failing to comply with 35 USC 101. Is that a conundrum that SCOTUS can usefully examine for us?”

    As an “Actual Inventor” I am quite pleased and find it far more lucrative to have claims that “change” an entire field rather than “preempting” it.

  50. MM Wrote: ” Lucrative, but not useful.”

    I know you may see things differently from North Korea, or whatever socialist/communist state it is you live in, but personally I find making money very useful.

  51. Blimpy wrote:

    “Actual Inventor, Not sure why you’re being so obsequious,”

    Look, I am not agreeing to the conclusions that the authors reached. But their brief actually proved Bilski deserves his patent.

    I am not sure of their motives for presenting the legislative record and case law that supports Bilski to only twist it at the end and conclude that Bilski’s invention is an abstract idea.

  52. “I think the only way you are going to get money out of one of us is if you offer to stop posting if we pay you off.”

    That works. 5000$. No posts, one year. Or 1000$ a month. Compared to Mike, who I’m sure many of you are familiar with, that’s quite a deal! As a bonus, I will also refrain from posting on any other sites.

    NWPA, btw, where’s mah spankin’? Can’t get past the threshold inquiry? A pity. :(

  53. >>I will Les. I’ll even cut you a bargain. I’ll >>only answer the question, with no explanation, >>for only 500$. I can set up a payment plan if >>that is more convienent for you.

    I think the only way you are going to get money out of one of us is if you offer to stop posting if we pay you off.

  54. I will Les. I’ll even cut you a bargain. I’ll only answer the question, with no explanation, for only 500$. I can set up a payment plan if that is more convienent for you.

  55. Les wrote:

    Once again, the purpose of the patent system is:

    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;

    How is E=mcc not part of the progress of science?

    Les, you are correct, according to the constitution Einstein should have been able to receive a patent for his discovery. Also the 1952 patent act would have upheld his discovery as statutory and eligible for patent examination in several classes including but not limited to processes.

    And of course we all know from hindsight that Einstein’s discovery would have passed muster at 102, 103, and given his genius, he would have had no problem writing it up for enablement at 112.

    I find it interesting that Einstein was working as a clerk in the Patent Office at the time he made his discovery and continued to work there for several years since no one in science or the patent office would take him seriously at first. Such a historical foot note only underscores how backwards bureaucracy can be and slow society is to accept progress. Given that fact, I am never surprised at the antics of the notorious 6 and like minded individuals on this blog that argue against the constitution and progress of science “AND” the useful arts.

  56. “Les I’m sorry that you lack fundamental understanding of the things which the things you are reading are based upon.”

    Spoken like a true examiner. When you don’t have an argument, spout gibberish in the form of an assertion.

    Answer the question:

    Once again, the purpose of the patent system is:

    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;

    How is E=mcc not part of the progress of science?

  57. Les I’m sorry that you lack fundamental understanding of the things which the things you are reading are based upon. That is unfortunate.

    However, I can offer to teach you, but I’ll have to charge.

  58. “Isaac Newton granted 20 years exclusive right to the use of gravity because he discovered classical mechanics.”

    Don’t be foolish. If he discovered classical mechanics then he would get exclusive rights to classical mechanics. People would be free not to fly off into space without paying royalties. Clearly there is a difference between gravity and analysis based on an understanding of gravity discovered or invented by I. Newton.

  59. “The “application” of that probably is Les, so Ein can claim it np. Problem is, you’re using the “application” of “it” to argue for the patentability of simply “it”. ”

    Talk about gibberish.

    Answer the question:

    Once again, the purpose of the patent system is:

    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;

    How is E=mcc not part of the progress of science?

  60. Les I have been over and over what amounts to this same concept with you already. Remember the mote? The mote hitting my hand wasn’t the useful part. You’re attempting to claim the not useful in order to capture the useful.

    “Why is the application of determining the energy not practical?”

    The “application” of that probably is Les, so Ein can claim it np. Problem is, you’re using the “application” of “it” to argue for the patentability of simply “it”. Stop setting up arguments destined to fail k? Seriously.

    If you truly know the state of the law on this subject already, then stfu already ok? It isn’t going to change because of your bs arguments. They’ve already been tried, and the court said “we’re not buying bs today, sorry.” Sometimes they do buy bs, by the cartload, but on this particular issue they have decided not to. More power to them to refuse loads of bs.

  61. While its certainly fun, in an geeky, amateurish kind of way – like when Mooney posts his inane claim hypotheticals, to kick around all these important sounding ideas, the fact is 101 is not a law regarding patentability. It is a law of eligibility.

    That posters here carry on as if that error, which appears consipcuously in the title, does not matter, discredits the entire piece.

    To be practiced well, patent law requires a certain rigor that is missing when little “nitpicky” mistakes like this appear.

    I don’t want amateurs like this trying to hijack patent law.

  62. Why is the application of determining the energy not practical?

    Moreover, the statue says “useful” not practical.

    Who would argue that E=mcc is not useful?

    Isn’t the a large part of the argument that it should not be patentable that it is TOO useful?

    In any event, I’m not arguing about what the law is, I’m arguing about what it SHOULD BE.

  63. Jules of course you don’t think that it is irrelevant, or you wouldn’t have brought it up. However, your switching gears to emccc shows that indeed your original supposition about emcc was irrelevant due to the time when it was disclosed.

    That said, your emccc argument is more relevant, but, you’re still going to fall into the same trap that dear ol Les is in right now. Practical application. It is required.

  64. NWPA as long as you are an insanely hot woman you can spank me any time. I have, after all, been a very bad boy. Whatever gets their rocks off is cool with me, I have a very high threshold for pain.

    However, until such a time as that should come to pass, a couple thousand will afford you the privelege of having every last little retort you make rendered meaningless.

    Tell you what. I’ll toss you a freebie just to get you interested.

    Your question is: why is it irrelevant?

    One answer is because nobody with authority has stated, or implied, anything that would make it relevant. Another answer, along these same lines, is that you, and anyone who thinks like you, have failed to point out any reason why it is relevant. Since there is no reasoning apparent on the supposition’s face as to why it would be relevant, it must be taken as being irrelevant.

    As soon as you manage to overcome that “threshold inquiry”, if you ever do (doubtful), we can delve a little deeper whenever you’re ready to pay.

  65. “Les, the answer is simply that what you propose is not the purpose of the patent system. ”

    Once again, the purpose of the patent system is:

    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;

    How is E=mcc not part of the progress of science?

  66. “Why can’t he claim a method of calculating the energy that would be released if a unit of mass were converted to energy?”

    Because even way back in Einstein’s time we already knew how to multiply a variable by a constant. The only novel and non-obvious aspect of your claim would be the mental interpretation of the result, which can ONLY be done by the human brain. A computer couldn’t care less what the calculation is about.

    Come on, do you really think the patent law is or ever was intended to cover the mere act of interpreting? Perhaps the Supreme Court should have followed through with Labcorp v. Metabolite.

  67. >>NWPA, I address the same misdirection of yours >>in every thread on this subject and I decline >>to this time. You never have anything >>worthwhile to say after I get through >>explaining it. If you’d like to pay a couple >>thousand I will be happy to reiterate it for >>you several times over and go into all the >>details until your heart is content.

    Uh huh. You mean you are afraid to be spanked again.

  68. “Thus, it is kind of an irrelevant concern.”

    I don’t think it’s irrelevant at all. Say Einstein junior comes out with E=mc^3 in modern times. Is a computer simulation that makes pretty pictures enabling? Does it have utility?

  69. Also, Charles Darwin is granted a 20 year exclusive right to evolution. Any organism caught evolving is infringing big time. Heh.

  70. Jules when emcc came out you wouldn’t have had diddly squat in the way of simulations because computers weren’t around to make them. Thus, emcc didn’t enable you to do much at the time of the invention. Later, down the road, perhaps, but that isn’t a question before the examiner of your application now is it? Thus, it is kind of an irrelevant concern.

    NWPA, I address the same misdirection of yours in every thread on this subject and I decline to this time. You never have anything worthwhile to say after I get through explaining it. If you’d like to pay a couple thousand I will be happy to reiterate it for you several times over and go into all the details until your heart is content.

    Les, the answer is simply that what you propose is not the purpose of the patent system. Just as protecting software isn’t. If you guys want to “protect” those types of development, fine. Propose a system to the government for them to “protect” them.

    Simple. Get to it.

  71. Les’s World:

    Christopher Columbus granted 20 years exclusive right to travel to America because he discovered that the earth is round.

    Isaac Newton granted 20 years exclusive right to the use of gravity because he discovered classical mechanics.

    H.B.Reese granted 20 years exclusive right to peanut butter cups because he discovered that the combination of peanut butter and chocolate is delicious.

    For that matter, anyone who discovers a new (to humans) naturally occurring substance gets a 20 year exclusive right to it.

  72. “e=mc^2 by itself doesn’t enable very much.”

    It can be used in computer simulations which make pretty pictures that I thoroughly enjoy. Enabling?

  73. Leopold -
    So on top of discovering that E-mcc, he now has to design a nuclear power plant? Why isn’t e=mcc enough?

    Why can’t he claim a method of calculating the energy that would be released if a unit of mass were converted to energy?

    Why isn’t such subject matter worthy of 20 years of exclusive use in exchange for disclosure? The world got along without it for 5000 years minimum. What harm is there in doing without it for another 20 in exchange for the ability to use it royalty free for the rest of eternity?

  74. “Why isn’t Einstein’s discovery worthy of a patent?”

    It’s worthy of several, Les. Who says it isn’t? All you have to do is describe in writing something you can do with it, in terms detailed enough so that I can make and use your invention. e=mc^2 by itself doesn’t enable very much.

  75. >>Why isn’t Einstein’s discovery worthy of a >>patent?

    It is a good point. Particlarly when one realizes that many of the discoveries and equations we use are approximations that we use in our brains to understand the world.

    Maxdrei: what is a molecule?

  76. Lionel -

    I know what the law is. I’m pointing out that it is absurd. Why should some minor change to a mouse trap be patentable while the biggest discovery since the big bang is not? Why isn’t Einstein’s discovery worthy of a patent?

    My quoting of the constitution is a separate issue related to ignorant statements by another poster.

  77. For a 101 rejection, the specifically enumaerated exceptions should be the only exceptions, 112, 101, 102, and 103 are more than enough to kill pie in the sky and ridiculously broad claims.

  78. NWPA can you extemporise on molecules and abstraction? I can see that when you pour the real contents of one test tube into another you might get a real new molecule, made out of C, H, N, O etc. But when I look at a claim that consists of benzene ring shapes, and indicia like “R” and “X”, that stands for multi-millions of “real” chemical compounds, I think I’m looking at something that (as such) isn’t “real”, so might instead be “abstract”. Can you help me get my thoughts straighter? Would be grateful.

  79. 6 said: >>And then, right before they went to >>bed they’re realize that this is irrelevant to >>their consideration at hand, and would sleep >>that much easier.

    Why is that 6? The quality of your comments has really determiated 6 to the point of skip.

    If one took the time to think about it, one would realize that most of the methods that people are having just so much trouble figuring out what to with are: 1) represent info. 2) process info. 3) do something with info.

    Ole step 2 there is a transformation as real as MM-trollbot mixing two testtubes together to make a new molecule (as if a molecule isn’t an abstraction) and the transformation 6 goes through after his 6th coca-cola.

    So, please, little 6, try to state why in your baiting silly posts.

  80. Les,

    You cannot patent a natural relationship that you have discovered. You can patent a use of that relationship, but not that relationship itself. Just because Einstein discovered that matter has rest energy does not mean that is or should be patentable as a discovery. That is not how that clause of the Constitution is interpreted.

  81. Yes but….

    What’s the patent system for? Is it to promote the progress of technology or the progress of the economy, or the pursuit of happiness?

    If the economy, then shouldn’t financial engineering get protection?

    Or was a surfeit of financial engineering the root cause of the present problems with the economy? Maybe the patent system ought not to be used as a tool to encourage it even more?

    Much fertile public policy ground here, for SCOTUS to rake over.

  82. I too think that the SC will try and establish an abstract/applied test. The issue will be the extent to which that application can be physically observered or, perhaps, measured.
    I think most will agree that clever ways of doing things using a computer should be patentable – for instance, the software which greatly increases the speed of the computer should be able to be patented. On the other hand, many will agree that convenient formulae for keeping track of customers, even employed on a computer, should not be able to be patented.
    The general principles are easily recognised. It’s turning those into a readily applied test which is the difficulty.
    Actually, I think the most likely result is that we’ll get KSR type “machine or transformation” is a useful indicator, but not a straight test.

  83. Actual Inventor it is my understanding that “fields” come in all shapes and sizes, from below nano to the same size as the universe.

    Every professional patent claim writer seeks to “pre-empt” the entire “field” targeted by the writer. Preferably the field is a nice big one but, when the art is close, the field can get really small. If the claim fails to pre-empt that entire “field”, however, then for its owner it has no legal value.

    But if a claim does indeed succeed in pre-empting an “entire field” then it must be refused as failing to comply with 35 USC 101.

    Is that a conundrum that SCOTUS can usefully examine for us?

  84. “Claim 1. A self-hypnosis method…

    Eligible for protection under 101?”

    That one’s fine as long as it’s performed in an airplane restroom.

  85. “Patentable under 101, or crap?”

    I’m gonna go with patentable (at least at the moment), AND crap.

  86. Step Back Wrote:

    “The statute says nothing about “abstract” and yet the amicus brief spends enormous energies in pretending that “abstract” ideas (as opposed to “nonabstract” ideas?) is an issue covered by 101.”

    There is case law that specifically says abstract ideas are not statutory subject matter. However, contrary to what others claim, Bilksi’s invention is NOT an abstract idea.

    What we learned from Diehr, and please correct me if I am wrong, is that an idea, when applied, that does not preempt an entire field, is not an an abstract idea.

    Now last night I watched a TV special on the richest people in the world. One man that was profiled was a Hedge Fund Manager. He went in depth on how the job was practiced.

    Clearly I could see that Bilskis specification and claims did not preempt this Hedge Fund Manager from doing his job and practicing the lucrative art of Hedging on wall street.

    If Bilksi were issued his patent today those Hedge Fund Managers would still go on making millions without having to pay Bilski 1 penny in royalties.

    And that puts an end to the last argument as to why Bilski’s application and claims are not statutory under 101.

  87. “At the end of the day, the SCOTUS has to figure out that information can be transformed and that transformation requires energy, time, and space. ”

    And then, right before they went to bed they’re realize that this is irrelevant to their consideration at hand, and would sleep that much easier.

  88. 6 wrote:

    “AI you must have missed the part at the end of this brief that states Bilski doesn’t get his patent because the authors say his claim is directed to an abstraction. Their brief is nonsense, and then they take what they preach and misapply it.”

    While obviously I disagree with their conclusion, the background of this brief, especially in summarizing Supreme Court precedent on 101 is everything I said it was. And it’s that constitutional record and case law that makes Bilsk’s application statutory. Furthermore my open questions still stand.

    1. Can anyone deny that a process is a separate and distinct category from the other classes?

    2. Can anyone deny Bilski’s invention is a process?

    3. Can anyone prove that Bilski’s invention is one of the judicial exceptions?

    ::Silence::

  89. ” The first comments is that a specific computer that was twice as fast as any other known computer could probably be properly claimed as a composition…”

    Malcolm, with all due respect, your credibility in these subject matter discussions would be at least slightly enhanced if you stopped referring to computers as “compositions.”

  90. At the end of the day, the SCOTUS has to figure out that information can be transformed and that transformation requires energy, time, and space. And guess what, if the test the CAFC uses was used on a machine that preformed the same function as a justice, the machine wouldn’t be eligible for patentability. Does that make any sense to anyone?

  91. step back “if people in the NorthEast can get their heating oil delivered at a steady, afforadble price even in severely cold winters”

    But the patent does nothing to make this outcome more or less likely, step back, because “prices” are arbitray and abstract numbers. Those who supply oil can cut it off at their whim. Sure, they might get in trouble with the “law” for breaking the contract, but so what?

    The bottom line is that “people in the NorthEast can get their heating oil delivered at a steady, afforadble price even in severely cold winters” without patents, tomorrow. All they need to do is pass the appropriate legislation and it will happen, BAM, like that.

    Doesn’t that strike you as profoundly different from the sort of “improvements” that patents are intended to protect?

  92. Claim 1. A self-hypnosis method for hammering a nail into a piece of wood, comprising : (1) envisioning the hammer as the hammer of Thor and the nail as an evil object that must be destroyed, and (2) contacting the hammer with the nail repeatedly until the nail is embedded in the wood.

    The specification says that for certain people, this concentration method leads to greater force being applied to the nail. Data is presented that appears to confirm this fact.

    Eligible for protection under 101?

  93. I notice some confusion regarding “improvements” and “transformations”:

    “An invention that doubles the speed at which a computer starts up, for instance, does not necessarily transform anything physical but it is a valuable improvement that makes it easier to use a computer.”

    First a comment, and then some questions, then another comment. The first comments is that a specific computer that was twice as fast as any other known computer could probably be properly claimed as a composition, while the software method of making it faster is abstract crap.

    Question (1): what about a software method that makes 0.1 percent of home computers 1.001% faster under certain conditions? Is that sufficiently “valuable” (i.e., “useful”) to warrant a patent? How do you draw the line? Remember: every novel EST had numerous practical uses. They were simply deemed to be “trivial”.

    Question (2): What about a new “process” (e.g., “directions”) for walking from my house to the nursing home where my grandmother has just been moved? Patentable? What if it improves the travel time from one hour to a half hour? What if it saves ten minutes? 1 minute? Ten seconds?

    Are patents necessary to achieve these kinds of answers to these kinds of puzzles? Is that really what patents are for?

    The other comment is that the brief does sort of undercut itself in the end because the argument respecting Bilski is so weak that it compels one to devise a better one. In that sense, I applaud the brief. The more of these things I read the more convinced I am that the Supremes are going to do their best to kill pure business methods while merely uncoiling the rope for poorly drafted software and diagnostic claims.

  94. Dear Professor Risch,

    Thank you for the reply.
    I tried to download from the link you gave, but no luck in getting it to download the actual paper.

    I never said I was smart and you were otherwise.

    35 USC 101 talks about a “useful process”. The US Constitution, Art. I, sect. 8, clause 8 talks about the “useful arts”. The Preamble to the Constitution talks about promoting the general welfare. My deep suspicion is that the US Supreme Court will stick to these published terms rather than giving weight to briefs that talk about “abstracts” and the like.

    What is a useful art?
    Well first we may want to give examples of arts that are not useful. How about the art of gazing into a crystal ball and predicting the future? I hope that most readers here will agree that such is entertaining but not really “useful” in so far as promotion of the general welfare is concerened.

    On the other hand, if people in the NorthEast can get their heating oil delivered at a steady, afforadble price even in severely cold winters, I think that would be a promotion of the general welfare and a useful end result if indeed there was a “process” for causing that useful end resutl to happen. Bilski asserts that his process, which includes initiating physical actions, provides that useful end result. Those who dislike Bilski’s invention, simply erase some of the steps from his claim. They do so by labeling those steps as “insignificant”. Personally, I find their actions to be arbitrary, capricious and disengenious. If we are going to have a fair debate about Bilski’s claims, we have to do it by considering all the words in Bilski’s claims, not merely the ones that support our pre-conceived conclusions.

  95. “iii) initiating at least three new transactions relating to said limited commodity, wherein the majority of transactions are with the second customer, thereby improving said likelihood of a profit and increasing likelihood of satisfaction of said more preferred customer.”

    survives 101 IMO

  96. step back – read my article: link to papers.ssrn.com

    You might find that I agree with most of the points you make, and that maybe – just maybe – I am nearly as smart as you are. Here’s to hoping…

    Which leads to the thoughtful comment by Bob Sayre, and my response answers a lot of the points made in these comments.

    There is a difference between scholarly writing and amicus brief-writing. Scholarship is about how the world should be, and amicus briefs are about the way the world is.

    To be sure, all of the authors compromised some scholarly position they have in one way or another to write this brief, but what we had to consider is life as we know it.

    The legal realist in me wishes the Court would read my article and say, “That guy is totally right, it is impossible to tell what is abstract, and 101 has no such limitation anyway.”

    The realist realist in me says there’s 150 years of Supreme Court precedent where they draw the abstract/applied distinction, and the best way to help the court make its decision – and that’s what an amicus brief does – is to provide whatever analysis we can to answer how that choice should be made.

    Is the analysis the same that we would provide with a blank slate? Some yes, some no. Is defining “abstract” difficult to do? Sure. Is it impossible as some here argue? Maybe, but I think the Court’s going to try to do it anyway, and so we try to provide our view of how the law lines up. We think it’s a whole lot better than we got in the Fed. Cir. decision in this case.

  97. AI you must have missed the part at the end of this brief that states Bilski doesn’t get his patent because the authors say his claim is directed to an abstraction. Their brief is nonsense, and then they take what they preach and misapply it.

  98. I’d say Mooney is the one being baited. I think its pretty much unanimous that everyone here considers Mooney to be the master at being baited.

    And I hope you’re not preaching my point to me. Don’t try to co-opt my observation.

  99. oh oh Blimpy.
    You’re being baited again.
    And biting onto the hook again.

    101 is not about patentability, but rather about Who is entitled to apply for and “obtain” a patent.

    The answer to who is “Whoever”:

    “Whoever invents or discovers any new and useful” blah blah blah “may obtain a patent therefor”.

  100. They don’t need my lecture Mooney, but apparently you do, along with the authors of “The Applied/Abstract Distinction is the Key to §101 Patentability” (whatever that is)

  101. “claims are the only things that read on anything.”

    The Federal Circuit looks forward to your exciting lecture, Blimpy.

  102. Mooney’s idea of a winning SCOTUS argument:

    “Your honor, let’s not nitpick over who infringed whom, this should be a joyous occasion bringing together two lovely companies and their attorneys to sit and enjoy this lovely paneling…”

  103. “Nitpicking”

    Something an amateur would say – for sure.

    Your the only one holding a stick. You should go beat yourself with it until you figure out this isn’t play time for bonzo. To real attorneys semantic nuances are everything.

    Just in case you forgot, and you want to try to pretend to be a real patent attorney, remember, claims are the only things that read on anything.

  104. “Accordingly to 35 U.S.C., sections 102 and 103 are conditions for patentability, not 101. Section 101 defines subject matter that is eligible for patentability.”

    Even if this nitpicking is correct, I don’t think anyone has difficulty understanding what step back was referring to. But do you remember how the discussion regarding the phrase “reading on claims” turned out? I suspect you don’t. The nitpickers ended up holding a shorter piece of stick.

  105. Actual Inventor,

    Not sure why you’re being so obsequious, but as others have clearly noted, the Applied Abstract brief is a clusterfoxtrot, not even withstanding the fact that I have never heard of “§101 Patentability”

    Accordingly to 35 U.S.C., sections 102 and 103 are conditions for patentability, not 101. Section 101 defines subject matter that is eligible for patentability.

    Referring to “101 Patentability” is amateurish, like referring to prior art “reading on claims” or using phrases like “comprised of.”

  106. “”Rader was wrong, by the way”
    (more snark courtesy of the resident sleazebag)
    No, Mooney, he wasn’t.”

    Ok, that’s an interesting admission. Where was the outrage from the Sunners back then?

  107. 1. A method of improving the likelihood of making a profit off a transaction of a limited commodity and increasing the satisfaction of a customer, comprising:

    i) defining a first customer as a preferred customer based on previous transactions with said first customer, wherein said transactions yielded a profit;

    ii) defining a second customer as a more preferred customer, based on previous transations with said second customer, wherein said transactions yielded a profit that was at least equal to the profit yielded by said first customer, and wherein said second customer is believed to earn more;

    iii) initiating at least three new transactions relating to said limited commodity, wherein the majority of transactions are with the second customer, thereby improving said likelihood of a profit and increasing likelihood of satisfaction of said more preferred customer.

    2. The method of claim 1, wherein said new transactions occur in the passenger cabin of an airplane.

    3. The method of claim 1, wherein said profits yielded by said first and second customer are compared using a computer, wherein said computer is connected to the airplane directly or remotely, and wherein said computer displays said profits on a screen.

    4. The method of claim 1 or 4, wherein said comparison is achieved by Knickel-Froheim analysis of said first and second customer profits.

    Patentable under 101, or crap?

  108. “Rader was wrong, by the way”

    (more snark courtesy of the resident sleazebag)

    No, Mooney, he wasn’t.

  109. “The Applied/Abstract Distinction is the Key to §101 Patentability”

    This is absolutely correct. The authors have prepared and presented a brief based on Supreme Court precedent, {most recently with Diehr } which in turn is based on the 1952 patent act and clear congressional intent.

    It’s one of the most intellectually honest, accurate, and elegant amicus briefs presented so far.

    And no one ( at least on this blog) can lay a legal glove on it. Attack all you want but can anyone deny that a process is a separate and distinct category from the other classes?

    Can anyone deny Bilski’s invention is a process?

    Can anyone prove that Bilski’s invention is one of the judicial exceptions?

    Since the above answers are invariably going to be no, then Bilski gets his patent.

    This case is so simple a 5th grader can rule on it.

  110. stepback “The statute says nothing about “abstract” and yet the amicus brief spends enormous energies in pretending that “abstract” ideas (as opposed to “nonabstract” ideas?) is an issue covered by 101.”

    101 does say a “process” which would include, if taken literally, any thought process. But nobody is going there, ever. Perhaps it’s because 101 also requires that the new and useful invention be examined “subject to the conditions and requirements of this title.” Since abstract processes and thoughts can not be examined with any rigor, they are out of consideration, period.

    It’s a reasonable conclusion.

    The other interesting term in 101 is “utility.” We know that the utility requirement is not boundless on the lower end. Something is not “useful” for 101 purposes merely because someone (e.g., the inventor) is made happier by its existence. More is required and, as may be expected, the requirement varies depending on the field of the endeavor. A new dog toy is evidently “useful” for 101 purposes while a new composition that could provide essential calories and nutrients to the dog is not per se patentably useful unless the applicant promotes the composition to the PTO as animal feed.

    Does that seem right? Where are the “words” in 101 that justify this result? Tell it to the companies whose business models were destroyed when the PTO declared ESTs unpatentable as lacking utility under 101.

    link to patentlyo.com

    Rader was wrong, by the way.

  111. Blimpy,
    Please do not feed the troll or let yourself get baited into a flame war.

    Let’s get back to the substantive issues, namely, the actual words in 35 USC 101 and how the subject amicus brief does not properly address those words.

    For example, 101 does not say anything about “obvious” and yet the amicus brief spends enormous energies in pretending that obviousness is an issue covered by 101.

    The statute says nothing about “abstract” and yet the amicus brief spends enormous energies in pretending that “abstract” ideas (as opposed to “nonabstract” ideas?) is an issue covered by 101. Now why is that? Stop being baited and start forcing your critical thinking cap into remaining in the turned on state.

  112. Don’t you have something really constructive to do Mooney besides bothering real patent attorneys, like, oh I don’t know, calling somebody a “sleazebag” and getting yourself deleted (for a change).

  113. “Have any of the amici supported the CAFC MoT test?”

    The problem with the machine or transformation test is that it is redundant. If there is no non-trivial transformation as a result of the process, then it shouldn’t matter if there is a particular machine recited in the method or not.

    The point of the machine test was to bonk computer-implemented inventions (compositions and methods) that were claimed vaguely, broadly and (most importantly) functionally without reference to any apparatus except those which perform the claimed functions (e.g., “processors” “storage means” etc.). There are better approaches for nuking such claims, however, than the CAFC’s “particular machine” test, even under 101.

  114. Steve -
    That is a lot harder to do. Those on that side have been given an extra month or two to come up with something.

    I assure you, if they do, the briefs will be based on half truths and misinterpretations.

  115. “Mooney is clearly NOT an elite who makes money on the prosecution and enforcement of CRAPPY BUSINESS METHOD patent claims.”

    You forgot something, Bob.

  116. “The point is to get rid of the claims. The only people who want them to survive are the elites who make money from the prosecution and enforcement of the claims. And trolls.”

    And Mooney is clearly NOT an elite who makes money on the prosecution and enforcement of patent claims.

    What would ya say, ya do, Mooney?

    Mal-cah, Mal-cah, Mal-cah notgonnaworkhereanymore Mooney.

  117. Mr. Wagner,
    As Hal Wegner has ably pointed out, Funk Bros is not about Sec 101. It’s an obviousness case, isn’t it?

  118. adding, Is there any sane person alive today who is not invested in the scheme who believes that the “novel” methods of accounting and investing that led us to a trillion dollar bank bailout were useful to anyone except the recipients of the bailout money? Or who believes that the best way forward is more novel accounting methods?

    If so, I’d like to hear from that person.

  119. Another way to justify the result in Bilski is to look at the invention from the infringement side. A claim that in its terms could be infringed by mental process is not patentable subject matter. For example the identifying and initiating steps claimed by Bilski without more, ie without steps that cannot be performed by mental process do not meet the requirements of Section 101. The same result could be reached based on Section 112, which functions to give the public notice of the scope of a claim. It would be a undesirably result to base infringement on the question “what is the accused infringer thinking”.

  120. “The only people who want them to survive are the elites who make money from the prosecution and enforcement of the claims. And trolls.”

    This is called baiting. MM, don’t you have anything better to do with your time?

  121. >>The point is to get rid of the claims. The >>only people who want them to survive are the >>elites who make money from the prosecution and >>enforcement of the claims. And trolls.

    The only things that want to get rid of them are the bizarre trollbots that continusously post the same messages over and over again.

  122. I would also like to see specific examples of patents claiming UN-applied abstractions, as spending money on patents with no intended commercial utility of some sort is not a normal activity. Whereas it does not seem difficult to think of many applied abstract ideas that would not likely pass 101 muster with any court?
    The cases often cited, like the Morse telegraph patent case, have claims that are not really un-applied, they were simply considered too broad in scope in relation to the disclosed embodiments, so as to allegedly cover every possible enablement. Which seems to me to confabulate 112 with 101?

  123. First, numbers corresponding to currency values are an abstraction and methods of “transforming” those numbers are abstract. “Offers” or “initiating transactions” involving transfering “value” for “commodities” do nothing to render the processes less abstract. Or, if you like, you could argue that the utility of these processes is not substantial under 101. Same difference.

    The point is to get rid of the claims. The only people who want them to survive are the elites who make money from the prosecution and enforcement of the claims. And trolls.

  124. Blimpy,

    Thank you for the word of support.
    I was thinking that Dennis would just outright censor me for not bowing deeply before this parade of finely clothed professors. I was surprised that Dennis let my comment stay.

    With that said, I would like to reply to Professor Risch (7:45am above) since I suspect he means well even if his abstract ideas are misguided.

    To do so would take more time than I have at the moment. As a first principle however, if a given action or set of actions (process) are abstract (i.e. purely mental steps), then how could any practitioner of such abstract action(s) be found out? How could infringement be alleged and ultimately sued for in a court of law?

    Here is an example. I am thinking at this moment. Tell me if I am infringing some claim directed to abstract idea(s) and how you know so. Tell me what damages you are going to claim for my having engaged in purely mental steps? How have I injured the patent holder of the abstract idea claims? What have I deprived him of in the non-free part of the market place? What permanent injunction will ensue from a court of equity? Stop thinking? Stop engaging in free speech?

  125. “I’ve heard of talking truth to power, but with due respect this amicus brief seeks to pawn gibberish on the linguistically uncritical and gullible.”

    Thank you step back, gibberish was the word I was searching for. Doesn’t even qualify as “gobbledygook.”

    As for Lemley’s fingerprints, you can always tell because they are smeared with Twinkie cream.

  126. In my opinion Wagner’s (…and apparently Lemley, et al.’s) analysis is far too simplistic. If subject matter eligibility was a simple matter of determining “applied” from “abstract” then I am confident 20 years of Supreme Court and Federal Circuit jurisprudence would have sorted it out by now and we would not be at the remote crossroads where we now are. The only thing that the thread of Supreme Court and Federal Circuit precedent has made clear is that there really is no “key” to subject matter eligibility.

    And as far as I know, there is no such thing as 101 “patentability” only subject matter eligbility. Patentability is a multi-faceted and longitudinal process of which subject matter eligibility is but one important step. Passsing muster under 101 does not equal patentability.

    That being said, Gottschalk v. Benson, was not about an applied/abstract distinction. The Court denied patentability to an “abstract and sweeping” claim: the mathematical conversion of binary coded decimals into pure binary format because of its pre-emptive effect – not because of its abstract nature.

    In my opinion, Wagner’s piece is less than rigorous analysis. And I am always suspicious of anything with Lemley’s fingerprints on it.

    This is what happens when academics dabble in patent law.

  127. Dingo-

    Judicial exceptions to the constitution?

    Really….

    Judicial exceptions to:

    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——–;

    Really…

    do cite a few.. Really

  128. “How do you get to be an examiner without knowing whats in 35 USC 101?”

    How do you get to be whatever you are without reading anything besides what’s in 35 USC 101? Judicial exceptions – look it up.

    Right now, physicists are trying to determine a grand unification theory that ties together quantum physics, classical mechanics, and relativistic mechanics. Whoever discovers the relationship will become very famous. However, they will not be able to get a patent on the relationship. They will likely be able to get a patent on a practical application of that relationship.

  129. Polk/Michael, when you apply this standard to the Bilski app. (page 31), you reject the claims in terms better addressed under the enablement standard of 112: “it is so broadly enumerated as to be a general principal that is non-enabled.” If the claims would be allowable if narrower, then we should be looking at 112 rather than further muddying the 101 analysis with other sections. 101 is convoluted enough standing on its own.

    Michael, this seems to be what you say in the third paragraph in your comment, above, and I agree with this approach. Yet you signed on to this brief which seems to merge and muddy the analyses. Are you quietly in dissent on this merged analysis? If you were on your own and not otherwise constrained in this case, would you go straight to 112 to reject Bilski?

    Thanks for your comments.

  130. “I am not sure that you can really say that the abstract/application distinction works for products of nature.”

    The authors don’t seem to say that. The brief seems only to make analogies between excluding abstract ideas and the exclusion of natural phenomemon as patentable subject matter. Perhaps a single test that excludes both natural phenomenon and abstract ideas won’t match Congress’ intent.

  131. You don’t have to disclose all embodiments. The scope of the claims should be all embodiments that would enable any one skilled in the art to make and use the invention. So, the disclosure is supplemented by the knowledge of one skilled in the art.

  132. Night -

    Mores invented electrical communication broadly and disclosed his preferred embodiment and claims same broadly. The mere fact that he claimed it broadly means he recognized that other embodiments were possible.

    Are you saying that patent applications must disclose ALL embodiments? How do you reconcile that with PTO whining that applications are too long?

    If you limit inventors to disclosed embodiments, then you render patents useless as any particular embodiment is easily worked around.

  133. “Hold on there bucko. Both of your so called “inventions” were nothing more than “discoveries”, ”

    How do you get to be an examiner without knowing whats in 35 USC 101?

    35 U.S.C. 101 Inventions patentable.

    Whoever invents —-or discovers—- any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

    The calculation of the amount of energy equivalent of mass is a process. Moreover, E=mcc might not even be “a fundamental principle”. It might just be a good approximation of a fundamental principle. Or, it may be the culmination of 6 fundimental principles and therefore be a secondary or tertiary principle.

  134. 6: I know “discoveries” is in the Constitution, but I don’t find “inventions”. So how do you get to the point of using “discovery” as a yardstick of non-patentability?

  135. >>2. When asking “How do you tell what’s >>abstract?” – please note that we give some >>clues in the brief, such as looking to utility >>and enablement.

    One skilled in the art needs no clues. Have you read Newman’s dissent in Bilski? Also, are you aware that engineering schools teach that the key to solving problems is to find the right level of abstraction. As long as you can go up and down the abstraction ladder. Computer science is a study in how using levels of abstraction enable problem solving and invention.

  136. “why is the world entitled to use it royalty free if Einstein was the one to discover it? ”

    We aren’t “entitled to use it “royalty free”". The government simply isn’t willing to shoot the good name of its patent system in the foot by granting itself the authority to grant such patents. For good reason.

    Why is the government “entitled” to preclude my using a basic law of nature? The answer is: It isn’t. The government isn’t entitled to anything. It simply takes what it wants by whatever means it wishes too.

    You need some lessons in life, liberty, and etc. I can teach you for a mere couple thousand.

    “Why is it that TRUE earth shattering/game changing inventions”

    Hold on there bucko. Both of your so called “inventions” were nothing more than “discoveries”, with some insignificant post-solution activity tacked on the end of one of them to avoid claiming the discovery itself.

    Btw, Einstein was under no obligation to tell us about it either.

  137. Thank you all for your comments – I’m sure there will be more. A couple of things to keep in mind here:
    1. We were trying to provide the Court with a test that comported with its precedent and had been applied before. If you don’t like the precedent, that’s a quibble with the Court, not our position.

    2. When asking “How do you tell what’s abstract?” – please note that we give some clues in the brief, such as looking to utility and enablement.

    Of course, in the ideal world these would be separate. For example, I (and I’m not speaking for my co-authors here) argued in a recent article called “Everything is Patentable” that 101 should be a categorical analysis, and that we should instead rigorously apply other patentability standards: link to papers.ssrn.com

    The article argues that we can weed out bad patents, including a whack to the side of my head, in this manner. The abstract/applied distinction merely imports some of the other requirements into the 101 analysis, which (as our brief shows) is similar to how the Court has looked at it for over 150 years.

  138. >>Even this decision was wrong headed.

    Les, it is enablement. Morse should have been entitled to all forms of communication with electrical signals that he had enabled with his invention. If you gave him all ways that weren’t enabled, then you would not be encouraging people to figure out new ways. And note that the new ways weren’t enabled by his invention, so the new ways are going to be improvements.

    Also, abstract/applied: just read Newman’s dissent in Bilski.

  139. “This applied/abstract distinction has a long history in Supreme Court caselaw. It can be most clearly seen in the O’Reilly v. Morse case from 1854, where the Court invalidated a claim to all communication by electrical signal as abstract, but allowed a claim to the application of the communications method to stand. 56 U.S. 62, 112-21 (1854).”

    Even this decision was wrong headed. If –communication by electrical signal– was too broad, the rejection should have been under 102. The world got along without such communication for 5000 years. Why wasn’t Morse, after having invented it, entitled to the benefit of his invention for 20 years or so?

    Similarly, the world got along without E-mcc for 5000 years. Even if it is a fundamental principle, why is the world entitled to use it royalty free if Einstein was the one to discover it? Such rulings are absurd.

    Why is it that TRUE earth shattering/game changing inventions are not worthy of a patent but small improvements (or even just changes) in mouse traps and tooth brushes are?

  140. “method could rely on a pure algorithm (abstract) ”

    What’s a pure algorithm and how does it differ from an impure algorithm?

  141. I’m asking myself whether the subject matter in the following claim is “abstract” or “applied”:

    What I claim is: Molecule “X”.

    Prof. Wagner, you will appreciate that “X” is new, and displayed in conventional sign language, using “C” “H” and benzene rings and so on.

    Prof. Wagner, does your answer depend on i) whether a use for the molecule is recited in the specification and ii) whether the “formula” which is the subject matter of the claim is in any way use-limited?

  142. I’ve heard of talking truth to power, but with due respect this amicus brief seeks to pawn gibberish on the linguistically uncritical and gullible.

    Let’s take the following sample sentence inside the brief:

    “We recognize there are legitimate concerns that certain business method and software patents, even those tied to a practical application, can present problems for society by walling off fundamental principles from other researchers and engineers.”

    Excuse me? Is anyone willing to parse this psychobabble sentence into semantically logical content?

    Let’s start with the last four words of the sentence.

    If there are indeed “other” researchers and engineers, then first and beforemost in the pre-articulation of this sentence, there must have been a set of “non-other” researchers and engineers declared. But there are none. The sentence speaks of things that don’t exist and never did. And what the h3ck in the first place do researchers and engineers have to do with 101? Anybody can be an inventor. 35 USC 101 says “Whoever”.

    The critical mind should ask where in 35 USC 101 there is a “fundamental principle”, what does this nonsensical phrase mean, and how could such be “walled” off from the poor and hapless “other researchers” by a “certain” patent? Is this another them who hates our freedoms line?

    There can be no “legitimate concerns” because no one knows even how to define what a “software” patent is or what a “business method” patent is as opposed to being not. You cannot be legitimate if you cannot define that which you have “concerns” about. Thus your concerns cannot be “legitimate”.

    Sorry if it sounds like disrespect, but this parade of the imperial professors wears no logical fabric. It’s all gibberish, compounded with aid of tongue twisting linguistics. Let’s parse it before we praise it and run it up the flag pole.

  143. Two thoughts:

    1. How does the abstract/application distinct work with Benson, which technically “applied” the abstract idea of converting binary numbers to the context of a computer? Or is it just taking the court at its word and ignoring that detail?

    2. I am not sure that you can really say that the abstract/application distinction works for products of nature. Nuclear fusion in the sun is not abstract; it is an application of the abstract principle of mass-energy equivalence. But no one thinks it should be patentable. It is one thing to say that abstraction/application works to discern what is an “abstract idea,” which is what Bilski is really concerned with. It is another to say that it works to define all of section 101.

  144. 6tard,
    Dennis didn’t write the article. It says quite clearly at the top that it is a guest post by Polk Wagner.

  145. Upon returning from my hot blooded storming out I realize that D isn’t to blame for this nonsense. My bad D. Insert that Polk guy for all instances of D above.

    Stu pid guest posts junking up the place.

  146. 1. A method comprising:

    beaning Mark Lemley, Michael Risch, Ted Sichelman, and Dennis Crouch upside the head using only a single hand wherein the hand is covered by a glove.

    Perfectly statutory. This is claimed in “applied” language as opposed to “abstract” language.

    You’ll recognize that the process isn’t anticipated, and I argue it isn’t obvious based on the simple fact that conventional wisdom teaches that we should use BOTH HANDS in such an extreme case as we have before us, and furthermore that the unexpected result of Dennis being absolutely surprised that the method performer didn’t use both hands is achieved.

    Nice try D, but I wouldn’t sign that brief.

    “FIRST, NEW AND NONOBVIOUS PROCESSES DO NOT ARISE
    ONLY IN FIELDS OF ENDEAVOR DENOMINATED “TECHNOLOGICAL.”
    nOR DO THEY ALWAYS INVOLVE THE “PHYSICAL TRANSFORMATION”
    OF MATTER OR RESIDE IN A SPECIFIC TYPE OF “MACHINE.””

    The 800 lb gorilla in the room is: What does that have to do with patentability under 101? Nothing.

    “iF
    PATENT LAW IS TO PLAY ITS FUNDAMENTAL ROLE IN SPURRING
    INVENTION, THEN PATENTABLE SUBJECT MATTER MUST INCLUDE
    ANY SORT OF NEW AND NONOBVIOUS INVENTION, HOWEVER IT IS EMBODIED, SUBJECT ONLY TO THE LIMITATIONS DESIGNED TO
    PREVENT THE PATENTING OF ABSTRACT IDEAS, LAWS OF NATURE,
    AND NATURAL PHENOMENA.”

    I guess our patent system just simply wasn’t functioning up until the 70′s, 80′s and so forth in your opinion D?

    “sECOND, EVEN WHEN THE EMBODIMENT OF AN INVENTION
    TRANSFORMS MATTER OR RESIDES IN A MACHINE, THE NEW AND
    NONOBVIOUS CONTRIBUTION OFTEN RESIDES IN THE INVENTOR’S
    INSIGHT THAT AN EXISTING TRANSFORMATION OR MACHINE COULD
    HAVE AN UNEXPECTED PROPERTY.”

    COULD HAVE? Are you kidding me? COULD??????

    “sECOND, EVEN WHEN THE EMBODIMENT OF AN INVENTION
    TRANSFORMS MATTER OR RESIDES IN A MACHINE, THE NEW AND
    NONOBVIOUS CONTRIBUTION OFTEN RESIDES IN THE INVENTOR’S
    INSIGHT THAT AN EXISTING TRANSFORMATION OR MACHINE COULD
    HAVE AN UNEXPECTED PROPERTY.”

    So claim that new and useful end tie it to a machine or the transformation achieved. Ur done.

    “nEW AND NONOBVIOUS INSIGHTS INTO WHICH
    MOLECULAR STRUCTURE MIGHT CURE CANCER”

    Maybe they should be required to wait and see if it does actually cure cancer? This thing does have to be useful you know.

    “iNDEED,
    ONE OF THE LESSONS OF PRIOR ATTEMPTS TO RESTRICT SUBJECT
    MATTER WAS THAT THE PRIMARY EFFECT WAS NOT TO PREVENT
    THE PATENTING OF SOFTWARE, BUT—IN RESPONSE TO PATENT
    ATTORNEYS’ CREATIVE EFFORTS TO DRAFT AROUND THESE
    ESSENTIALLY ARBITRARY LIMITATIONS—TO MAKE IT MORE
    DIFFICULT FOR THE PATENT & tRADEMARK oFFICE (“PATENT
    oFFICE”) AND COURTS TO IDENTIFY AND WEED OUT QUESTIONABLE
    PATENTS.”

    According to D, if the court fails in what it was doing, it should just give up instead of doing the right thing even though it be late. Concepts for your children to live by I’m sure D.

    “tHIS TEST PROVIDES AMPLE BASIS TO WEED OUT THOSE
    PATENTS THAT ATTEMPT TO MARK NOT A PRACTICAL APPLICATION,
    BUT INSTEAD A FUNDAMENTAL PRINCIPLE, SUCH AS THE PATENT
    AT ISSUE IN THIS CASE. bILSKI AND fiARSAW CLAIM A BROAD
    PRINCIPLE OF DOING BUSINESS, WITHOUT TYING IT TO ANY
    SPECIFIC APPLICATION.”

    But if they had said “to make money” at the end of the claim they’re in the clear? D, go back to the drawing board and get this load of it out of here. It was a good attempt, but Bilski passes your test just fine. Initiating a transaction. Bam, he isn’t an abstract idea and he just slaughtered you.

    On the bright side, AI now has someone of decent reputation to argue against. Go get D and his abstract idea crowd AI. I should just let you handle the small side work and not even comment on rubbish like this.

    I’m dissappointed in you D. Sadly.

    “a PROCESS IS A MODE OF TREATMENT OF
    CERTAIN MATERIALS TO PRODUCE A GIVEN RESULT. iT IS AN ACT,
    OR A SERIES OF ACTS, PERFORMED UPON THE SUBJECT-MATTER
    TO BE TRANSFORMED AND REDUCED TO A DIFFERENT STATE OR
    THING.”).”

    Dang near the perfect definition. But you’d throw it out the window.

    I’m done reading this nonsense I have better things to do tonight than waste my time reading about a position the USSC would (and will) see right through with no problem.

  147. Are patents on tax strategy methods abstract or applied? I can envision arguments going both ways since the method could rely on a pure algorithm (abstract) but of course also has an applied result (a tax payment). I think that many other business method patents could also be argued either way making this type of distiction seemingly useless.

  148. I would like to see this test applied to actual applications and claim language. fellow commenters, please post some actual applications/patents and claim language, and your thoughts as to how this test would be applied

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