Patentable Subject Matter of a Machine that Uses a Mathematical Algorithm

Ex Parte Gutta (BPAI 2009)(Precedential)

In its fourth precedential opinion of 2009, an enlarged panel of the BPAI has created a new test for judging whether a claimed machine (or article of manufacture) that takes advantage of a mathematical algorithm falls within the patentable subject matter requirements of 35 U.S.C. Section 101. The two-part test parallels the Federal Circuit’s Bilski decision that focused on the patentablility of method claims. Of course, Bilski is now pending before the Supreme Court and a decision is expected in the Spring of 2010.

The BPAI’s test for a claimed machine (or article of manufacture) involving a mathematical algorithm asks two questions. If the a claim fails either part of the two-prong inquiry, then the claim is unpatentable as not directed to patent eligible subject matter.

(1) Is the claim limited to a tangible practical application, in which the mathematical algorithm is applied, that results in a real-world use (e.g., “not a mere field-of-use label having no significance”)?

(2) Is the claim limited so as to not encompass substantially all practical applications of the mathematical algorithm either “in all fields” of use of the algorithm or even in “only one field?”

In Gutta, the BPAI applied its new test to find its system claim unpatentable. Gutta’s system claim (claim 14) includes two coupled components — namely a memory and a processor.  The claim indicates that the processor is configured to identify a “mean item” whose symbolic value minimizes the variance of a set.  On those facts, the BPAI found that the claim failed the first prong by not limiting itself to any “tangible practical application in which the mathematical algorithm is applied that result in a real-world use.” Likewise, the claim failed the second prong because it “encompasses substantially all practical applications” of the algorithm.  “That is we are unable to identify any other practical application [of the algorithm] outside of the broadly defined claim.”

Interestingly, the decision was issued in August 2009, but made precedential in December 2009. By then, Gutta had abandoned the application. The patent application (SN 10/014,192) is assigned to Koninklijke Philips Electronics.

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607 thoughts on “Patentable Subject Matter of a Machine that Uses a Mathematical Algorithm

  1. *******Why? What purpose of the patent statutes is furthered by granting monopolies on methods for converting one number into another? Do you honestly believe that banks and insurance companies will not be motivated to develop “new” methods of massaging numbers unless they have patent protection? Do you have any evidence for that?*******

    I’m not making a policy argument. I’m saying what I think the premption doctrine means in view of the case law. You can continue to argue for reversal of State Street all you want on policy reasons. But if you have an alternative understanding of the preemption doctrine in view of all the major cases on 101, including State Street, then please let us hear it.

  2. Malcolm,

    Drop those heavy strawmen you are carrying –

    There is no asterisk next to PROMOTE in the Constitution, so your “..unless they have patent protection” line is legal-logically bankrupt.

    As you have been challenged above, the “Methods for converting one number into another” is also
    legal-logically bankrupt.

    Just as 6 seems to have an endless supply of rope, Malcolm seems to have an endless supply of straw.

  3. But I think if the algorithm is useful without a computer, such a statistical measurement and adjustment process that might be performed in banking or insurance even without a computer, then simply tying the claim to a general purpose computer ought to avoid preemption.

    Why? What purpose of the patent statutes is furthered by granting monopolies on methods for converting one number into another? Do you honestly believe that banks and insurance companies will not be motivated to develop “new” methods of massaging numbers unless they have patent protection? Do you have any evidence for that?

  4. I said, “At that point, tying the claim to a machine interfaced with the real world in a particular way should be necessary.” I guess I should have said, “At that point, tying the claim to a particular machine, such as a digtial computer, an analog computer, or as computer interfaced with the real world in a particular way, should be necessary.”

  5. NWPA: (2) Refusing to accept modern physics that information is every bit as important as other properties.

    As 6 noted, “blah blah blah blah”. Well before Bilski Diehrbots like you were told (by me) that this quantum physics “argument” (or whatever you want to call it) is d.o.a. Subsequent events have proved me correct and you wrong.

    Deal with it. Grow up and deal with it.

  6. What i meant was, “At that point, tying the claim to a machine interfaced with the real world in a particular way should be necessary to avoid preemption.”

    I don’t necessarily agree that preemption should be a test that is employed to determine patentability of claims involving a process made up of recursive computational procedures that arrive at a solution in a finite number of steps. But as far as what the principal of preemption is really about, that’s what I think it is about.

  7. Algorithm: A step-by-step problem-solving procedure, especially an established, recursive computational procedure for solving a problem in a finite number of steps.

    IMO, an algorithm can be carried out in the mind of a person, by a person using pen and paper and maybe a handheld calculator, automatically by a computer, by a rube goldberg machine, etc.

    For preemption, it is necessary to look at the context in which the algorithm is practically useful. Converting between base ten and binary is really only practical useful, as far as we know, when carried out by a digital computer. Thus, tying the claim to the digital computer does not avoid preemption. But I think if the algorithm is useful without a computer, such a statistical measurement and adjustment process that might be performed in banking or insurance even without a computer, then simply tying the claim to a general purpose computer ought to avoid preemption. The only time I think it should matter whether the claim is tied to a particular machine, versus a general purpose computer, is when the algorithm is only practically useful when carried out by a computer. At that point, tying the claim to a machine interfaced with the real world in a particular way should be necessary. Otherwise, it should not be necessary in my view.

  8. “What exactly is the point that you are trying to make?”

    Go read PoiR’s lengthy explanation. I’m sure he’ll post you a link if you ask him nicely.

    Applied “maths” are no more patentable than any other “maths”. An application of math in a statutory embodiment might pass muster. Big MIGHT. In reality it probably doesn’t, but courts might cut you some slack because they’re overly generous.

    “And, in fact, if you fairly thought about this, you would realize that these machines that are replacing people must be eligible for patentability. ”

    The thing you never explain is: Why? Why in the he ll would I realize that? And if they’re replacing people shouldn’t Obama outlaw such machines to preserve jobs? (lol)

    NWPA I don’t think you understand something about me man. I’m a patent purist. Ok? It’s that simple. Analogously I’m that guy on wall street arguing that we needed at least the basic regulations that they cut in 1995? that allowed banks to f us by investing their (our) money in bad assets. The patent system was setup with a few things in mind. Those things are properly within its scope. That’s all I’m saying.

    I don’t begrudge you “protection” for your software or your algorithms or your maths or anything, even old products etc. perhaps. What I do begrudge you is inserting them into the legacy patent system. Go off and have congress create you your own statute to protect these things. It’s true, the economy is changing and all that other rubbish that you guys spout as reasons to insert these types of claims in the patent system that we have. Those are reasons to protect what you’re talking about, not reasons to insert them into patents. Take them to congress, get them to pass you some protection. It’s not that big of a deal. Supposedly you guys have the support of major industry players. $$$$$$$$$$$$$$$$$$$$$$$$ will get you what you want. Just look at Disney and copyright.

    In sum, patents are not the proper vehicle. They were not created to be, and they don’t work properly for that intended use. Go have congress do something else for you.

    “Transforming information takes (1) time, (2) energy, and (3) space. There is nothing abstract about it.”

    This is what the court hears: blah blah blah. Everything is self-evidently abstract about it.

    “(1) Using different definitions of abstract than the term of art abstract in patent law. See Newman’s dissent in Bilski.”

    Sorry, Newman is wrong. The fact that some people might have mistakenly started using the word incorrectly in patent law doesn’t justify not correcting the situation. Sorry. It just doesn’t.

    “I would love to see anyone one of you, I will borrow the term, wankers, argue your position before the USSC. The brow beating would be enormously hilarious to observe. You might even pis your pants from being embarrassed in front of like 200 of your peers. ”

    I’m going to repeat that for you guys. With an addendum.

    In the conversations I’ve had irl and the ones I’ve witnessed irl on the subject people taking your position become overwhelmingly sheepish about their position. Outlandishly and embarrassingly. Sure, they’re all bluster stating it, but when the response comes they’re like: yeah, well, yeah, well. And then that’s about it. One of these was documented for you at the USSC, although there were a lot of other conversations going on outside the building in that long line. All of them end up the same way.

    We may very well be being ridiculous on my side of the argument, but you guys KNOW you’re being even more ridiculous when you discuss this in public. Just like the people who espoused getting rid of the regulations on wall street a few years back. Just watch them on TV. All stammering with a lot of “well”‘s and “but but but”‘s. Most of the time back a year ago you could tell a good portion of them were trying to hold off tears. Which is as it should be in their case.

  9. What I think preemption is really all about is (d), which is more artully phrased as follows:

    If the algorithm is useful in other contexts, tying the claim to a machine avoids preemption, but if the algorithm is useful only with a machine, the claim must be tied to a particular type of machine, and if the algorithm is useful only with that particular type of machine, preemption is still not avoided.

  10. @ everyone, returning to what Benson stands for, is it that:

    (a) if the claim is tied to a machine, the algorithm must be useful in other contexts (more or less what I said);

    (b) the algorithm must be usful only with a machine, and the claim must be tied to one, but not all, machines that employ the algorithm (what I think 6 said);

    (c) if the algorithm is useful in other contexts, tying it to a machine avoids preemption, but if it is useful only with a machine, it must be tied to a particular type of machine, and if it is useful only with that particualar type of machine, it still does not avoid preemption; or

    (d) something else.

    If you choose (d), please explain.

  11. 6,

    An over-abundance of rope on your hands again I see. From the link you provided:

    “An effective method (also called an effective procedure) for a class of problems is a method for which each step in the method may be described as a mechanical operation…”

    What exactly is the point that you are trying to make?

    As far as the chattering guy – he has never been able to explain the difference between maths and applied maths or understand that applied maths are perfectly patentable.

    Anytime you want to put down the shovel…

    Malcolm,
    “Transforming one number into another can not reasonably be considered a change of state sufficient to satisfy 101, regardless of whether the first number is a “measurement” of a tangible composition(s) or event(s).”

    Prove it, especially considering that the transformation is NOT merely one number into another (let’s remove the straw from your pathetic strawman). 5 becomes 3 is indeed meaningless, but that’s not what we are discussing – we are discussing applied maths that mean something in each transformation step. Put the briar patch examiner tricks that you and 6 love so much aside and address the substantive issue, if you can.

  12. Please include in any response your explanation for why the moons of jupiter actually orbit the earth.

  13. And, in fact, if you fairly thought about this, you would realize that these machines that are replacing people must be eligible for patentability.

    So, what is the problem? The problem is that some people have an agenda and other simply do not understand the machines. But, anyone that is reasonable, must come to the conclusion that these are machines that are replacing people so must be eligible for patentability.

    And, that the invention that makes the machine able to replace people–the new part–is the information processing method.

  14. But, of course, baboon, what you will do is go to your fall back position that the claims fail either 103 or 112.

  15. In fact, MM and 6, your explanations for why information procesing machines should not be eligible for patentability seem as convoluted and absurd as the medieval church’s explanation for why it appeared that we weren’t in the center of the universe.

  16. But, it is funny to read the baboon trying to affect a manner of reasonable judgment.

    MM: do you get that these machines perform the tasks that humans are paid to perform? Do you get that? Do you get that you are acting like a medieval clergy in trying to find some way to reject these machines. The fact is that these machines are replacing humans and your explanation for why they should not be eligible for patentability is absurd.

  17. Transforming information takes (1) time, (2) energy, and (3) space. There is nothing abstract about it. Perhaps 6 you are confusing the difference between a machine that is transforming information in a finite amount of time, using a finite amount of energy, in a finite amount of space, and performing tasks that humans are paid to perform, with the abstract concept that you have formed in your limited baboon brain of this machine.

  18. MM & 6: you are ridiculous and relentless.

    What you are doing:

    (1) Using different definitions of abstract than the term of art abstract in patent law. See Newman’s dissent in Bilski.

    (2) Refusing to accept modern physics that information is every bit as important as other properties.

    (3) Acting like baboons.

  19. Last I checked, method claims that transform something (an article) from one state to another clearly satisfy even the MOT test.

    Transforming one number into another can not reasonably be considered a change of state sufficient to satisfy 101, regardless of whether the first number is a “measurement” of a tangible composition(s) or event(s). Numbers are abstractions. Transformations of abstractions are no less abstract than the abstractions thereby transformed.

  20. “Prove it.”

    Don’t need to. It is by definition.

    Noise, looks like you left out the “effective” part from your bolding. Perhaps you should read that guy who is always chattering on about what “effective methods” are before bringing up a “reference” that shows exactly what I say is true is actually true.

    Oh look, it appears that someone already made an article explaining it to you.

    link to en.wikipedia.org

    And besides all that, they are self-evidently abstract ideas. Anyone requiring a “proof” of this is like people requiring a “proof” that 1+1=2. Sure, maybe that is important for some things, but it sure as f isn’t important for a judge to rule 1+1=2 when it comes down to it. He was taught basic math and can do it on his fingers. Similarly, he was taught what an algorithm is. An abstract idea.

    Even so, I’m not sure what you want to prove by stating that they’re a method. They’re sure as f not going to get patented as a method anytime soon by themselves. You might have a prayer with the tying them to a machine, but probably not.

    “Last I checked, method claims that transform something (an article) from one state to another clearly satisfy even the MOT test.”

    That’s funny, even the Bilski decision says otherwise. Last I checked.

    In fact, last I checked, abstract ideas, like algorithms, are under judicial exception.

    I would love to see anyone one of you, I will borrow the term, wankers, argue your position before the USSC. The brow beating would be enormously hilarious to observe. You might even pis your pants from being embarrassed in front of like 200 of your peers.

    “Since dogs are not that reliable, section 101 is not met?”

    I believe what MM stated, for those of you who are hard of hearing, or hard of understanding, was that regardless of 101 being met, the better question is who cares whether you can patent the dog-sniffing?

    The obvious answer imo is the con men trying to get gullible authorities to use their dog sniffing services to “protect” us. Aka shut down our airports at random times.

  21. Why doesn’t 6 turn to his favoratie source (wikipedia) to define algorithm?

    Here, I’ll help: link to en.wikipedia.org

    “In mathematics, computing, and related subjects, an algorithm is an effective METHOD for solving a problem using a finite sequence of instructions. Algorithms are used for calculation, data processing, and many other fields.

    Each algorithm is a list of well-defined instructions for completing a task. Starting from an initial state, the instructions describe a computation that proceeds through a well-defined series of successive states, eventually terminating in a final ending state.”

    Oh, wait a second, an algorithym is a method that transforms something from state to state.

    Last I checked, method claims that transform something (an article) from one state to another clearly satisfy even the MOT test.

  22. But if I invent a smelling machine that is 100% reliable and works like a charm, but is only different from other smelling machines by virtue of the algorithm by which it operates, you won’t let me patent it. Thanks so much.

  23. The Auburn trainers believe their dogs can detect very small traces of explosives and then follow the trail to the person carrying a bomb”

    Does this meet 101?

    In response to this, I wrote upthread: “Well, since this ridiculous method will never prevent a single terrorist from doing anything he/she wants, the better question is: who cares?”

    And by coincidence, this recent news item turns up:

    Minn. airport official: Nothing suspicious in bag

    MINNEAPOLIS — A spokesman for Minneapolis-St. Paul International Airport says nothing suspicious has been found in a bag that prompted a partial evacuation of the airport.

    Spokesman Patrick Hogan of the Metropolitan Airports Commission says a bomb-sniffing dog found the bag on a luggage carousel during a routine inspection Tuesday. He says the bag was never on a plane and was only a placeholder typically left by airline employees to signal other employees that the airplane is empty.

    Hogan says “we’ll probably never know” what caused the dog to react.

    Portions of the baggage and ticketing areas were shut down as well as a road in front of the airport after the bag was found at 2 p.m. All of the gates and baggage claims reopened at 3:20 p.m.

    Dogs are next to worthless for this sort of thing. Use them for hunting bodies or animals in situations when they can’t interfere with human beings trying to live their lives. They just aren’t that reliable. Never were, never will be.

  24. “IIRC, the prior Sup. Ct. case law said that laws of nature and abstract ideas are not patentable subject matter. ”

    As it so happens, an algorithm is an abstract idea :(

    “Regarding Bilski, the government argued that the only thing wrong with the Bilski claims was that they were divorced from anything physical, like a computer. I think that puts the physicality issue squarely before the court.”

    So because the government argued it then that puts the issue in front of the USSC? No sir, the USSC will determine what the actual issue is before it. As the USSC already pointed out, the government shot itself in the foot by arguing that nonsense. And had you have been there you’d know that the governemnt lawyer realized it.

    “Mayo — bogus limitation? I’m not so sure. ”

    1. A method of optimizing therapeutic efficacy for treatment of an immune-mediated gastrointestinal disorder, comprising:

    (a) administering a drug providing 6-thioguanine to a subject having said immune-mediated gastrointestinal disorder; and

    (b) determining a level of 6-thioguanine or 6-methyl-mercaptopurine in said subject having said immune-mediated gastrointestinal disorder,

    wherein a level of 6-thioguanine less than about 230 pmol per 8108 red blood cells indicates a need to increase the amount of said drug subsequently administered to said subject and

    wherein a level of 6-thioguanine greater than about 400 pmol per 8108 red blood cells or a level of 6-methyl-mercaptopurine greater than about 7000 pmol per 8108 red blood cells indicates a need to decrease the amount of said drug subsequently administered to said subject.

    Remember, steps a) and b) were in the prior art iirc. The whereins are nothing but statements of inherent properties.

    For instance, you could write a dependent claim from this claim that reads:

    2. the method of claim 1 wherein the method of administering further comprises:

    step 1 of prior art method of administering
    step 2 of prior art method of administering
    step n of prior art method of administering
    and wherein the method of determining further comprises:
    step 1 of prior art method of determining
    step 2 of prior art method of determining
    step n of prior art method of determining.

    And that would be a perfectly validly written claim.

    You have to remember what is being claimed. What are the actual method steps being claimed? The actual method steps being claimed are the method steps of the prior art. Administering and determining. The wherein statements in the first claim have no effect upon them.

    It’s like writing a claim that reads:

    1. A method of forming a bicycle comprising:

    attaching a frame to a seat
    attaching a handlebar assembly to the frame
    wherein the frame comprises metal and wherein the metal comprises a percentage of Al
    and wherein the percentage of Al in the metal indicates a need to oxidize the frame such that the percentage of Al in the frame indicates a need to do x method step.

    x method step could be anything, melt the whole assembly down and start afresh, weld a new part onto the assembly. But that doesn’t matter because that method step never has to take place. All the limitation consists of is an indication of a need. Not a method step itself.

    If the prior art shows (or would be implicitly understood to include) such a percentage of Al being used in the formation of a frame/handlebar/seat assembly then the claim is anticipated. Regardless of whether or not anyone knew to melt the thing down and start afresh or use such welding to attach a certain piece as a result of that percentage of Al being in the frame.

    I might even object to the whole thing for including things within it that neither describe the method itself, a method step or are a method step themself. I’ve done it before. Invariably they’ll include a limitation to say what they mean which in this case according to D is:

    “As Mayo explains, this merely involves the physician’s mental recognition of a natural correlation between metabolite levels and patient condition.”

    And when they put that step in properly then I will take care of it appropriately under 102 or 103.

    All that said, the Fed. Circ. held properly since nobody presented the issue to them properly and they aren’t required to enter a new grounds of invalidation unless they notice it themselves. Plus, they usually don’t take issue with things that I would simply object to. They just give the patentee the benefit of the doubt it seems.

    Oh and I don’t remember Haliburton.

  25. 6, what case said that mathematical algorithms are not patentable? I could look it up, but since you seem to know, let us know.

    IIRC, the prior Sup. Ct. case law said that laws of nature and abstract ideas are not patentable subject matter. That is not the same thing as saying that mathematical algorithms are not patentable.

    Regarding Bilski, the government argued that the only thing wrong with the Bilski claims was that they were divorced from anything physical, like a computer. I think that puts the physicality issue squarely before the court.

    Mayo — bogus limitation? I’m not so sure.

    Assume for example, the claim was like the claim in Haliburton: determining the distance to the bottom of an oil well by exploding dynamite, receiving and recording acoustic waves from the well, and adjusting a tuner to distinguish the tubing collar signals from noise. The result of the claim is a measure of the distance to the bottom of the well, which is useful information. Does the claim have to go the next step and say that one should continue drilling if the depth is less than desired?

  26. “Yet what Benson holds is that a mathematical algorithm”

    Actually I think that was held before Benson, sorry to burst on ur bubble.

    “and even it is claimed in connection with a computer.”

    That’s not necessarily true.

    “We learn from Diehr that one has limit the claim to the disclosed use.”

    Most of us learned that from Benson, it is just that some of the class was asleep :(

    “But the issue of intangible, but apparently useful, algorithms is the very issue before the Supreme Court in Bilski.”

    Not really :(

    “They should not simply declare that because such an algorithm is “mathematical” or is a “business method” that they cannot be patented. They should explain to us why they should not be patented.

    Is “because we say so” not good enough for you?

    ” the Mayo case”

    Is a joke. Intended use limitations ftl. That claim had a bogus limitation stuck on the end of it. 102 should apply just fine. It is mere unimaginative advocacy that is landing us in some of these quandaries.

  27. Good discussion since my post on the previous page.

    Another analogy: A chemical compound without a disclosed use is unpatentable. The same chemical compound becomes patentable with even one disclosed use; yet such a claim wholly preempts all uses of the chemical because the claim is to the chemical, not to the use of the chemical.

    Yet what Benson holds is that a mathematical algorithm is not patentable subject matter even if it has a disclosed, practical, tangible use and even it is claimed in connection with a computer. We learn from Diehr that one has limit the claim to the disclosed use.

    An apparent difference between a chemical compound and a mathematical algorithm is that a mathematical algorithm itself is non physical while the chemical compound is.

    A second apparent difference is that compositions of matter are statutorily claimable per se –implying that congress fully intended that compositions of matter not be limited to the disclosed use.

    Ditto articles of manufacture like nails.

    But the issue of intangible, but apparently useful, algorithms is the very issue before the Supreme Court in Bilski. Hopefully, the Supremes will give us guidance. They should not simply declare that because such an algorithm is “mathematical” or is a “business method” that they cannot be patented. They should explain to us why they should not be patented.

    Now I can see in cases such as the Mayo case the apparent injustice caused by not tying the claim to the disclosed use. There a researched who administered the drug, ordered the test for metabolites and reviewed the report — but not for the purpose of adjusting the dosage level for treatment of a specific disease, the disclosed use, but for an entirely different purpose, was deemed to be an infringer. Such a result cannot be justified, so there has to be a flaw somewhere. But is it in Section 101, or is it in Section 112, p.1 and p.2?

    Hopefully, we will get clarity on these issues from the Supremes.

  28. You’re telling me that this is not your site? Broje, come on.

    link to allthingspros.blogspot.com

    Even if it isn’t yours she hits most of the highlights, and usually comes to the correct legal conclusion. I’m rather impressed.

    That said, the mannerisms and all used point pretty conclusively to it being you broj. Not to mention the subject matter of the site.

  29. *****I like your new site btw, you should get D to link it. ********

    You apparently think I am someone else. I’m curious who it is.

  30. “How is one to judge whether or not someone else could use it?”

    When the one side concedes that they have encompassed all possible uses for the algorithm then it is pretty easy.

    I’m pretty sure that his claim was enabled Night.

    “The key to understanding Benson is that it was written mainly by an EE person at the DOJ”

    That’s very interesting to know. Where you alive during this time period? I forgot how long ago this was.

  31. And finally, what is the name of that case with the antenna that is sized according to a mathematical formula?

    I think the holding in that case is that if there is only one embodiment possible, then give them the patent. Enablement again is enough to police problems.

  32. And finally, let’s be real here. It is settled that we should be discussing patent law and numbers cannot discuss patent law and therefore the number 6 should not be able to post to this blog.

  33. The key to understanding Benson is that it was written mainly by an EE person at the DOJ. He thought that anything that had a number in it was math and that it should be in the public domain. This is a view straight from the 1940’s when he was educated.

  34. It is also interesting to note in this twisted bizarre logic that somehow or another a judge (read almost never any technical training) is supposed to foresee how other may use what J. Douglas calls an “idea, mathematical formula, or algorithm.” How is one to judge whether or not someone else could use it?

    And don’t we have a tool in patent law to deal with this problem? I think it is called enablement.

  35. It is interesting to note that Justice Douglas didn’t know the difference between the statements “a = y” in computer language and “a = y” in math.

    Really, little 6, to be quoting from such rot is just shameful.

  36. Quoted from above:
    “It is conceded that one may not patent an idea. But in practical effect that would be the result if the formula for converting binary code to pure binary were patented in this case. The mathematical formula involved here has no substantial practical application except in connection with a digital computer, which <409 U.S. 72> means that if the judgment below is affirmed, the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself.”

    Also, so, is it an idea or an algorithm or a formula, or let’s just throw in everything because what we are really saying is that we don’t want to allow patents for information processing methods and we want to throw in every word possible to try to tie it in to our previous cases and to make it easier for the lower courts to apply this opinion in anyway they can.

  37. “hat’s some pretty weaselly backpedaling you did there.”

    I’m not backpedaling at all! OMFG roflz. Just because you have a hard time understanding what I’m saying doesn’t mean I’m backpedaling. Your cited section of Benson isn’t the most helpful part of the decision when finding the takeaway message.

    “according to Benson, a claim limited to a machine that has an algorithm is only patentable if the algorithm would be useful if not implemented on a machine”

    This is still wrong. At the very least you’re saying it wrong. You might be meaning to say the right thing by saying that, but I don’t think so.

    Try:

    “according to Benson, a claim limited to a machine that has an algorithm is only patentable if the algorithm would be useful if implemented on a machine different than the machine in question”

    Whether or not it is “useful if not implemented on a machine” is irrelevant. Whether or not it is useful (i.e. you could make other machines, or MAYBE processes with it) if implemented in OTHER machines besides the one in the claim is relevant. Do you understand what I’m saying? Whether or not it is “useful” “on paper” or “in the abstract” is irrelevant. Whether or not you could make other “patentable inventions”, shall we say, using the algorithm which are not captured by the claim is what we’re looking for.

    “(except you forgot that the claim has to be limited to a machine so that it does not preempt all uses of the algorithm that is additionally useful when not tied to a machine).”

    I kept my options open, algorithms might be used in compositions of matter at some point here shortly in the future. And you can’t forget methods and products. Machines, or apparatuses, aren’t the only things that might involve an algorithm.

    The thing that some people don’t seem to understand is that while Benson happened to relate to a apparatus claim the same principle in Benson could apply to methods, products or compositions of matter. Some people might try to limit Benson to the case of the apparatus but that would be improper.

    I’m tellin ya broje, I think you’re still a little bit off having brought both our views into line with one another. And I’m not just sayin this to fool the judge.

    I like your new site btw, you should get D to link it.

  38. I said, “according to Benson, a claim limited to a machine that has an algorithm is only patentable if the algorithm would be useful if not implemented on a machine.”

    Then you said, “What you’re doing is essentially saying: If the claim is valid – then the claim preempts all uses of an algorithm in the abstract (unattached to a machine).”

    When I confronted you with the quote from the opinion, you backpedaled to say, “If the mathematical formula involved here has substantial practical application except in connection with a digital computer – Then the claim is valid.”

    It seems you think, as I do, that the word “except” should be taken to mean “other than.”

    That’s some pretty weaselly backpedaling you did there. You apparently now agree that what I originally said was right (except you forgot that the claim has to be limited to a machine so that it does not preempt all uses of the algorithm that is additionally useful when not tied to a machine). But you are claiming that I said something else, without identifying what that something else is.

    Good job. Keep up the good work. You’ll make a great lawlyer one day, because people fall for that sort of thing all the time, especially Judges.

  39. Wait wait, let’s do another!

    If the claim is invalid – Then the mathematical formula involved here has no substantial practical application except in connection with a digital computer.

    Contrapostive:

    If the mathematical formula involved here has substantial practical application except in connection with a digital computer – Then the claim is valid.

    Perfect! See, these LSAT tools really do come in handy in your everyday legal career.

  40. Contrapositive! That was the word for it. It was right on the edge of my tongue.

    Ok, so what Benson held, in even longer hand:

    If [the] mathematical formula [involved in the instant claim] has no substantial practical application except in connection with a digitial computer – then the claim is invalid.

    Contrapositive:

    If a claim is valid – Then [the] mathematical formula [involved in the instant claim] has substantial practical application except in connection with a digital computer.

    That is a true statement. And is completely in line with the holding in the case.

    Don’t forget your basics broj.

    I think you also might just be having a hard time reading that passage you quoted from Benson, he uses a round-about way of explaining what he is talking about. It looks especially bad cut from the context in which he was speaking.

    For instance, here:

    “But in practical effect that would be the result if the formula for converting binary code to pure binary were patented in this case.”

    the “formula”, i.e. algorithm, was not being patented, a device implementing the formula was. So what the author of the opinion is referring to is actually the device and, only by extension, the formula, rather than just the formula per se. You need to know that from the context in which you’re reading. Feel free to plug some kind of language reflecting that into the longhand version of what Benson holds above.

    I recommend reading the decision from beginning to end three times back to back and you will probably come to understand it. Try to let the words flow together as a whole, don’t “dissect” the decision as it were.

    Now, based upon the rest of the decision you can easily extend the holding past digital computers.

    If [the instant] mathematical formula has no substantial practical application except in connection with the claimed device – then the claim is invalid.

    and the contrapositive.

    If the claim is valid – Then [the instant] mathematical formula has substantial practical application except in connection with the claimed device.

    You’ll notice that the word “except” is awkwardly used and you would do well to replace it with equivalent language in the original to better suit taking the contrapositive.

    I’m not really sure what I should be weeping about, you simply cited the exact thing I’m trying to tell you.

  41. 6, read this and weep:

    “It is conceded that one may not patent an idea. But in practical effect that would be the result if the formula for converting binary code to pure binary were patented in this case. The mathematical formula involved here has no substantial practical application except in connection with a digital computer, which <409 U.S. 72> means that if the judgment below is affirmed, the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself.”

    I’m quoting the case, 6. “The mathematical formula involved here has no substantial practical application except in connection with a digital computer.” That is the reason the claim in Benson was found to preempt the algorithm. Believe it.

  42. “So, according to Benson, a claim limited to a machine that has an algorithm is only patentable if the algorithm would be useful if not implemented on a machine. ”

    Um no, that’s not a valid turning around of the logic in Benson. Sorry :(

    The usefulness of the algorithm when not implemented on a machine is irrelevant. For the purposes of this legal inquiry they probably assume outright that algorithms in the abstract (i.e. not implemented on a machine) are never “useful” in and of themselves under 101. However, even that assumption is irrelevant to the inquiry at hand. The only thing that is relevant is the usefulness of the algorithm when implemented on a machine (or in a process I would also assume) that is not covered by the claim in question is relevant.

    “Yet again, that is when the system or process is patentable under Benson. ”

    Sadly it isn’t :(

    The only thing you’re missing is that you’re turning around the logic in Benson improperly. Probably because you’re misunderstanding the logic in Benson in the first place.

    You know there was a trick that I learned for the LSATs that might help you.

    If Then logic and how to make valid transverse statements. There’s a fancy name for this which I forgot but you might remember.

    Benson says:

    If the claim preempts all uses of an algorithm in the abstract (unattached to a machine) – Then the claim is invalid.

    You switch the sides and change all negative statements to positive and postive statements to negatives.

    If the claim is valid – then the claim does not preempt all uses of an algorithm in the abstract (unattached to a machine).

    iirc think that was how it was done. That statement is correct.

    What you’re doing is essentially saying:

    If the claim is valid – then the claim preempts all uses of an algorithm in the abstract (unattached to a machine).

    You simply are forgetting to negate the left side when you switched sides.

    You could write out what Benson says in long hand:

    If the claim preempts all uses of an algorithm in the abstract (unattached to a machine) regardless of whether the claim is to a product – Then the claim is invalid.

    You still come out with a valid if then if you turn it around like I told you above.

    If you find it incomprehensible it’s simply because you’ve forgotten your basics.

  43. Benson said that the claim, even though limited to a machine having certain components, preempted the algorithm entirely because the algorithm was one that would only ever be useful on a machine having such components. So, according to Benson, a claim limited to a machine that has an algorithm is only patentable if the algorithm would be useful if not implemented on a machine. How much sense does that make? How many times has Mooney cried out that taking an old method and implementing it on a computer is never patentable, when in fact that is practically the only time it is patentable under Benson? How many times has Mooney wept over method steps that could be carried out with a pen and paper, even though a computer is recited? Yet again, that is when the system or process is patentable under Benson. Is it any wonder we find it incomprehensible?

  44. All attorneys here arguing with Benson are merely arguing their own inability to comprehend concepts and/or written language. It’s sad really :( On the other hand, you guys may very well succeed in convincing some folks that you in fact do have a hard time comprehending things.

  45. I have wrestled with broje’s question, from many angles.

    The final conclusion that I reached to avoid logical inconsistency was that all method claims should be deemed non-statutory, and that only devices should be patentable subject-matter.

    Abstractions like claimed “systems for…” would be eliminated, and claims would be made to unitary mechanical devices only.

    A unitary mechanical device would be defined as a device that had that lowest reducible function that had a substantially different character than any of its constituent components–for example, working upon a particular substrate that none of the components could work on individually.

    Down with method claims!

  46. >>Well, since this ridiculous method will never >>prevent a single terrorist from doing anything >>he/she wants, the better question is: who >>cares?

    You need to go back to boot camp to learn the difference between 102 and 103.

  47. The Auburn trainers believe their dogs can detect very small traces of explosives and then follow the trail to the person carrying a bomb”

    Does this meet 101?

    Well, since this ridiculous method will never prevent a single terrorist from doing anything he/she wants, the better question is: who cares?

  48. 101 Subject Matter: there is a German case about breeding birds that I think is relevant. Can’t remember it though.

  49. Like Ned, I don’t understand the basis for discriminating against claims to machines that implement a useful algorithm. The algorithm itself is not being precluded by the claim, just all machines that implement the algorithm. And if a real world use is disclosed, it should not be necessary to limit the machine to a particular real world use in the claims. We do not require such limitation for other machines, such as a hammer. The claim to a hammer does not have to be limited to driving a nail to pass 101. And a hammer can certainly be used for other things, including nonpatentable things, such as being included in a static metal sculpture for purely artistic expression. Therefore, I don’t know why there is a need to discriminate against machines that implement useful algorithms by requiring the claims be limited to a specific use.

  50. 101 subject matter ????

    “At Auburn University in Alabama, researchers are working on less intrusive ways for dogs to detect explosives carried by people. The school is in the process of patenting a process in which dogs would sample the air left in the wake of travelers passing through an airport terminal.
    The Auburn trainers believe their dogs can detect very small traces of explosives and then follow the trail to the person carrying a bomb”

    Does this meet 101?

    Such a simple question and the obvious answer should be yes, a process for using dogs for detecting explosives is patentable subject matter according to the 1952 patent Act and the US Constitution. However current CAFC opinion would add the extra requirement that the process be tied to a particular machine or apparatus or transform a particular article to a different state or thing, the so called MOT or machine or transformation test.

    The BPAI apparently is also exercising some discretion ( debatable as to if such discretion is legal or not) as to what qualifies as a particular machine or 101 eligible transformation. But don’t look for any concrete definitions as the board is literally making it up as they go along, and it changes from case to case.

    Finally, the supreme court is currently reviewing the entire subject and may totally invalidate the CAFC opinion this spring. Of course, then the Court could replace MOT with something called a Useful Arts test in which case an invention for detecting explosives with dogs would probably not be 101 subject matter since such methods did not exist at the time of the writing of the constitution and therefore is not what the framers considered to be part of the useful arts. Finally if that happens expect a new 101 case to reach the Supreme court within two years challenging the constitutionality of such a ruling thus bringing the entire process back to square one, and leaving the simple answer to your question unsettled.

  51. “At Auburn University in Alabama, researchers are working on less intrusive ways for dogs to detect explosives carried by people. The school is in the process of patenting a process in which dogs would sample the air left in the wake of travelers passing through an airport terminal.
    The Auburn trainers believe their dogs can detect very small traces of explosives and then follow the trail to the person carrying a bomb”

    Does this meet 101?

  52. BigGuy I was referring to anyone that thinks an information processing method is a law of nature. Not even the likes of MM or 6 would believe such nonsense, I hope.

  53. “Bilski supports us.”

    LOLOLOLOLOLOLOLOLOL

    Wait, wait,

    LOLOLOLOLOLOLOLOLOLOL

    “?Representing a real world object (represented information) and then transforming that representation of the real world object is eligible under Bilski. ”

    We’ll see if that “gemlol” survives the closer inspection of the USSC. And we’ll see if there aren’t some other issues with those kinds of claims that Bilski just didn’t happen to get to.

    In any event, Bilski explains to you how in the world some types of claims that might be drawn to cover your example would fail.

    Happy New Year to you guys.

  54. >>I’m not saying it is or it isn’t, but you can >>read Benson, Flook, and Bilski for an >>explanation of how in the world it could be.

    Bilski supports us. Representing a real world object (represented information) and then transforming that representation of the real world object is eligible under Bilski.

    On Douglas, he was saying that it was a law of nature” “those there mathematical algorithms that we done did learn when wesa were in high school. Them thar things are like E=M*C*C and such.”

  55. >>Let’s see the claim and I’ll tell you.

    Classic confusion between 101 and 103. You need to go back to examiners training camp.

  56. >>Software that can see?

    Use your higher reasoning skills–ooops, I forgot baboons don’t have higher reasoning skills.

  57. A company makes software that watches the employees to see if they are gifting merchandise (not ringing up) for friends.

    Software that can see?

    Would we want to say that such a program is not eligible for patentability?

    Let’s see the claim and I’ll tell you.

  58. “What Justice Douglas actually did in Benson was to try to say that an information processing method is a law of nature. How silly can you get?”

    As silly as someone who would naysay J. Douglas on that issue?

    To be clear, what he said was that the algorithm was an abstract idea iirc, which is different than a “law of nature” one might say.

    “This by the way, flows from EE people’s perspective of information processing methods as being tools to accomplish their job. This is an very outdated view of information processing methods from the 1940’s.”

    What would you have the poor EE’s believe? That information processing methods are in fact MAGIC to accomplish their job? Gonna be a tough sell.

    “How in the world could that be?”

    I’m not saying it is or it isn’t, but you can read Benson, Flook, and Bilski for an explanation of how in the world it could be.

    Big, I think they’re arguing with J Douglas and the rest of the USSC atm.

  59. I read an article in the NYT today about shoplifting. A company makes software that watches the employees to see if they are gifting merchandise (not ringing up) for friends.

    Would we want to say that such a program is not eligible for patentability? How in the world could that be? It replaces people watching the employees with cameras.

  60. Night Writer Patent Attorney: “What Justice Douglas actually did in Benson was to try to say that an information processing method is a law of nature. How silly can you get?”

    preposterous and patently absurd!

    It’s the equivalent of the SCOTUS declaring that a slave was property and not a human being and therefore could not sue for freedom.

    And certainly just as dumb as Scalia suggesting that patents be limited to inventions of the type used in the 18th century which was primarily crops, farming tools, and horse and buggy apparatus. The so called useful arts doctrine. What the proponents of this way of thinking leave out, or simply ignore are the words, (promote the progress), which are also in the constitution.

    There is no way you can promote the progress of science and technology a.k.a. useful arts, if you leave out complex information processing systems and then limit new technology to inventions that were already pioneered at the time the constitution was written.

  61. What Justice Douglas actually did in Benson was to try to say that an information processing method is a law of nature. How silly can you get?

    This by the way, flows from EE people’s perspective of information processing methods as being tools to accomplish their job. This is an very outdated view of information processing methods from the 1940’s.

  62. Definition 1 for “arrogate” reminds me of the old English sin of claiming your invention in a way that is “covetous”. And somebody once decreed (on high authority) that thou shalt not covet what rightfully belongs to thy neighbour.

    So this stuff goes back quite a long way.

  63. “6, I am still waiting for your definition.”

    Definition of what? The word “preempt”?

    Try

    2. to acquire or appropriate before someone else; take for oneself; arrogate: a political issue preempted by the opposition party.

    for arrogate:

    1. to claim unwarrantably or presumptuously; assume or appropriate to oneself without right:

  64. Big, you are educating me. Thanks.

    Yes, I dare say I’m frustrating to argue with. I’m amusing myself here, and delighted to get a response that teaches me something.

    I had supposed that “separation” of powers meant separation of powers but, looking at your Wiki reference, it seeems that, in the USA, “separation” means “balancing”. Can we agree that both jurisdictions enjoy the privilege of a full measure of “separation” of powers?

    As to Binding Precedent, one sees at the EPO attorneys from England urging EPO tribunals that precedent T987/65 obliges them to find for their client, and mystified when the tribunal ignores them. German judges don’t do much referring to earlier individual decisions, except when they are acknowledged landmarks, and fit with their conclusions.

    Of course no common law judge would admit to being “hamstrung”. Self-respect and all that. But (SCOTUS and the CAFC) he is, isn’t he?

    Europeans have a great deal to learn from America. No question. I like to think that talking reveals the best of both worlds.

  65. “You dare? Or you would like it to be? Or you vaguely hope it is? Like it or not, these things are universal. Europe and the USA has more in common than you (and perhaps also JAOI) would like to believe.”

    Max, I can’t imagine what I’ve said to suggest that I’m as ardent a nationalist as JAOI. I love my country, just as I love my church and family, and many of my colleagues. But I certainly won’t maintain that any of them are perfect, or ever have been. But I keep trying.

    Back to the topic at hand, I must say that you’re pretty difficult to discuss things with, as you seem to switch sides repeatedly. If you read my previous post again, I think you’ll find that I was the one arguing that Europe and the US are not so far apart in how judges approach the law, notwithstanding your preoccupation with “binding precedent”. I’ve already told you that US judges spend much of their efforts focusing on the words of the statutes, just as they do in Europe. You’re the one claiming that a German judge’s focus is EXCLUSIVELY on the statute. Once more, I ask whether the difference is really as stark as you claim – do German judges truly never discuss prior case law in their opinions?

    Finally, I still maintain that there is generally a difference between how “separation of powers” is viewed in Europe and the United States. I’d have to do more research to demonstrate convincingly that I’m not alone in this thinking, but at least Wikipedia agrees: “The underlying principle of separation of powers is seen somewhat differently in civil law and common law countries… ( link to en.wikipedia.org ). I’m not sure why you suggest that I merely “hope” that this is the case. I’ve spent a fair amount of time in Europe and working with Europeans, and I think we Americans have a lot to learn from them.

    And no, I don’t think you “touched a nerve” with regards to your characterization of US jurisprudence as “hamstrung” by the doctrine of stare decisis. I simply think you’ve overestimated the impact of this doctrine on the day-to-day work of US judges. I doubt you’ll find a US judge who characterizes his work that way.

    Cheers!

  66. Thanks Big, for:

    “While judges are constrained by binding precedent, they are not “hamstrung.””

    Is that so? I see I touched a nerve there.

    You write:

    “I dare say that “separation of powers” has a somewhat different meaning in most of Europe than it does in the US.”

    You dare? Or you would like it to be? Or you vaguely hope it is? Like it or not, these things are universal. Europe and the USA has more in common than you (and perhaps also JAOI) would like to believe.

  67. “However, we must remember what nonstatutory means. It only means that it is not on the list of approved subject matter. The statute does not have a restriction purporting to prohibit a claim to otherwise permitted subject matter that might be equivalent to an algorithm claim.”

    It isn’t flawed when you consider that what you propose is merely draftsman’s tomfoolery. The court took that into consideration and ruled.

  68. “That means that the accused device reads on the claims of the patent. Okay. So, does the patent enable a person of ordinary skill to make the accused device? If yes, then there should be no dispute. The accused device is clearly part of the invention of the patent. If no, then we have a claim that is broader than the scope of enablement. And the issue isn’t pre-empt other uses, but that you should only get the scope of enablement of your claims.”

    That is a separate issue, but it isn’t the issue which we are discussing right now :(

  69. “I think that when you look at the great detractors of information processing you see ignorance, fear,”

    I think when you look at the not very great promoters of information processing patenting you see ignorance and the inability to recognize their own ignorance :( Also, they fear that those that are not ignorant are going to stomp on them :) Sometimes you see that too.

  70. “6: why do you think that pre-empt all uses isn’t related to enablement?”

    Because I’m not du mb. Sorry :( Read Benson for further explanation.

    “What does pre-empt all uses mean?”

    It means that all useful end uses of the algorithm are captured by the claim. I’m having trouble stating this in simpler terms. If a first grader could understand what I’m saying I don’t think I should have to further elaborate for you just because you want to play du mb.

    “And what would the test be?:

    Can anyone in attendance (examiner, applicant, attorney, judge, jury etc.) at either the PTO or court envision a useful application of the algorithm that is not captured by the claim?

    It’s a fairly simple test man. There’s nothing ridiculous about it. It’s easy to implement and it also is quick and painless.

  71. The flawed circular logic of “preempt all uses” is that:
    1) a first claim merely to an algorithm per se (alone) is non-statutory;
    2) a second claim to a machine or process that preempts all practical uses would have the same effect as granting a patent to the algorithm;
    3) therefore such second claim must be nonstatutory.

    However, we must remember what nonstatutory means. It only means that it is not on the list of approved subject matter. The statute does not have a restriction purporting to prohibit a claim to otherwise permitted subject matter that might be equivalent to an algorithm claim.

  72. “all methods and processes can be performed mentally. In fact every invention is performed mentally when read”

    Hagbard Celine wrote: “AI, I’m sorry but that’s just plain wrong. The issue is what actions actually infringe the claim.”

    Okay, I understand you are discussing infringement and I am discussing 101 eligibility. However, I do want to elaborate on my point about when methods and processes are actually being performed. Before discussing the scientific nature of performance I want to share the American Heritage Dictionary definition, as follows:

    “perform |pərˈfôrm|
    verb [ trans. ]
    1 carry out, accomplish, or fulfill (an action, task, or function) : I have my duties to perform.
    • [ intrans. ] work, function, or do something to a specified standard : the car performs well at low speeds.

    Now, Hagbard Celine let’s take a look at the example you provided below of performing an algorithm.

    “A method that simply involves deriving, say, a numerical value, in which the end result of the method is the value itself, can be done entirely mentally. If the method further involves making use of that value in, say, an industrial process control system, then you haven’t performed the invention until derived value has been applied to an actual control system.”

    First, I can prove for scientific purposes that the method that was done mentally, as described above, was indeed a performance. This can be accomplished in at least two ways:

    Magnetic Resonance Imaging (MRI)

    By having an individual perform the algorithm while being scanned by an MRI device an anatomically accurate photo can be taken of the brains shape and size. This is relevant because neuroscientists now know that the brain changes its actual shape when a person mentally works out a problem and solution. The concept is called brain plasticity. Meaning the brain is flexible and changes like plastic based on what we are choosing to think about. I like to call it the playdoh effect. Since the entire idea reminds me of playdoh and how you can change and mold it to your will. Although, if I understand the law correctly, such mental performances are not patentable subject matter, they are indeed performances that transform the human brain, fulfill an action, task, or function, and can even be measured to a specified standard with MRI. I understand that the courts have arbitrarily labeled such pure mental processes as abstract ideas but as you can see there is nothing abstract about it.

    The second way we can prove an algorithm has been performed is with,

    Positron Emission Tomography ( PET)

    Now, using your same example let’s say the mental process is now applied to your industrial process control system. Whether it is entered on a keyboard via a computer monitor or spoken aloud to say a advanced system of the fantasy type used on the Star Ship enterprise, the brain still is involved in a problem solving process and the performance can be proven using a PET scanner. During the scan the brains use of glucose will be measured. The more of an expert you are at applying the algorithm the less glucose the brain will need. This concept is referred to by Neurologist as “brain efficiency.’’ Experts at inventing and applying algorithms are more efficient, and thus use less glucose than novices. They have in effect a low glucose metabolic rate GMR. This is not to be confused with mere abstract and/or novice thinking which in contrast would be associated with a high glucose metabolic rate.
    So once again, we have proof of a performance that transforms the human brain, fulfills an action, task, or function, and can even be measured to a specified standard with PET.

    Based on the science and technology described above we can conclude absolutely that:

    A) Algorithms are not abstract thoughts or ideas.

    B) Algorithms, (methods and processes) are indeed performed, whether it be mentally, on pencil and paper, or with the aid of a machine such as a computer.

  73. “This ‘Separation of Powers’ thing. We do have it here as well you know. Wasn’t it the Victors who wrote the German Constitution?”

    Sorry, I can’t say I know very much about the German Constitution. I thought we were talking about European patent law. In any event, I dare say that “separation of powers” has a somewhat different meaning in most of Europe than it does in the US.

    Yes, you might want to look up “bureaucrat.” I don’t think federal judges in the US qualify.

    I also think you’re a little off base on “Binding Precedent.” (Not to mention being a bit specious with regards to your statement that “They concern themselves exclusively with giving effect to the intent of the Statute.” Are you really telling me that German judges don’t read prior cases and discuss them in their opinions?) As you are wont to do, you overemphasize some differences between US legal practice and the rest of the world, and totally fail to recognize others. The fact is that despite our legal system’s origins in common law, much (most) of our law is statutory and regulatory, and judges are usually focused primarily on the words of the statutes and/or regulations. In this context, “binding precedent” simply means that a judge doesn’t reinvent an interpretation of a particular statutory text that has already been interpreted by a higher authority. While judges are constrained by binding precedent, they are not “hamstrung.”

    The concept of binding precedent promotes stability, but its more primary purpose is repeatability and predictability. Congress could make patent law very unstable by changing it every few weeks. We still ought to be able to predict reasonably well how the courts will interpret any given statute, thanks to (among other things) the concept of stare decisis.

  74. No, BigGuy, no evidence. Just impressions drawn from CAFC Decision text, deja vu (or, rather, deja read) but with a good dose of wishful thinking as well, I suppose.

    Perhaps “stability” is not the best word. I had in mind the level of confidence a professional lawyer enjoys, in being able to predict the outcome of disputed legal proceedings. That sort of stability ought to concern the judiciary, don’t you think, in any country that holds sacred the Rule of Law.

    Ah, the “Intent of Congress”. Of course. I wasn’t giving enough attention to that. I will have to concentrate harder if I want to discern that.

    This “bureaucrat” thing. When I think “Binding Precedent” before I look up “bureaucrat” in the dictionary, I am left thinking a judge in a common law jurisdiction is a bureaucrat. Judges in “continental” jurisdictions aren’t hamstrung by Binding Precedent. They concern themselves exclusively with giving effect to the intent of the Statute. That, in your book, is at least as good as in the USA, isn’t it?

    This “Separation of Powers” thing. We do have it here as well you know. Wasn’t it the Victors who wrote the German Constitution?

  75. “Me, I think SCOTUS and the CAFC are influenced, on the issue of inherent patent-eligibility, by the complete absence since 1973 of any swing of the pendulum in Europe.”

    But you have absolutely no evidence of that influence, do you?

    “What wouldn’t they give, to have such stability in their own bailiwick?”

    Properly capturing the intent of Congress should be far more important to the courts than “stability.” Stability is the concern of bureaucrats, not the judiciary. I know this idea offends your continental sensibilities, but it truly is one of the best features of our constitutional separation of powers.

  76. And, I’ve run afould of this “list’ in EPO practice. And, I agree that it is somewhat similar to some of the magic words used in the U.S. In EPO practice, I had an invention deemed a scheme and I tried to get around this classification, but to no avail. The examiners simply would not consider other arguments once they put it into scheme bucket.

    One thing popped into my head that makes the life of EPO examiners easier is that they can say well that is a new argument, so if you want us to consider that you’ll have to pay more and give us more time.

  77. >>What wouldn’t they give, to have such >>stability in their own bailiwick?

    Well, the point of the patent system is to encourage innovation. What wouldn’t the EU give to have the information processing innovation of the U.S.?

  78. All this “pre-empt” thing is unknown in Europe, so I can understand the frustrations of those who see cherished claims being dismissed by it. Europe also holds to the idea that you shouldn’t get more scope than that which you enable.

    And Europe routinely grants claims covering business methods and software on a disc. The ingenuity of inventors, EPO applicants and their European patent attorney representatives knows no bounds.

    But then again, the European Patent Convention 1973 has a handy little list of things which, per se, are barred from patentability. I guess it is this little list which does the “pre-empt” job in Europe. The List includes:

    a) discoveries, scientific theories and mathematical methods;

    c) aesthetic creations;

    c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; and

    d) presentations of information.

    See Art 52(1) EPC. Noteworthy is that the Governments of the EPC Member States met in 2000 to fine tune the 1973 Convention into compliance with GATT-TRIPS. They chose to leave this text of Art 52 EPC undisturbed.

    Me, I think SCOTUS and the CAFC are influenced, on the issue of inherent patent-eligibility, by the complete absence since 1973 of any swing of the pendulum in Europe. What wouldn’t they give, to have such stability in their own bailiwick?

  79. And 6, you say pre-empts other uses. Okay. So, let’s say there is a device (“accused device”) that we want someone to be able to make that if we give this patent then they won’t be able to make without infringing.

    That means that the accused device reads on the claims of the patent. Okay. So, does the patent enable a person of ordinary skill to make the accused device? If yes, then there should be no dispute. The accused device is clearly part of the invention of the patent. If no, then we have a claim that is broader than the scope of enablement. And the issue isn’t pre-empt other uses, but that you should only get the scope of enablement of your claims.

    You see this pre-empt other uses doctrine is related to enablement. And, pre-empt other uses is being used by the anti-patent group to hang silly arguments on.

  80. Also, Just Visiting, the problem I have with the legal opinions is not that they aren’t what I think they should be, but rather that the courts are not applying the law but making up ridiculous doctrines to eliminate areas from being patent eligible.

    It is hard to spend a day without seeing a new information processing application that is changing our lives. And, really, this whole business method thing is out of context.

    I think that when you look at the great detractors of information processing you see ignorance, fear, and a very odd reaction where judges seemed to be offended that the computer is doing what they are doing.

  81. Just Visiting:

    We don’t know what the law is for 101 until Bilski issues. But even Bilski from the Fed. Cir. is promising in that it recognizes that representing an object in a computer and then transforming the representation of the object is patent eligible.

  82. 6: why do you think that pre-empt all uses isn’t related to enablement?

    You didn’t answer the question, though, What does pre-empt all uses mean? And what would the test be? Spend some time answering those questions and you’ll figure out that it is nonsense. P.S. where’s you baboon friend?

  83. “”Are these not substantial uses?”

    Not for the purposes of this context Hierarchy. ”

    6, if you’re going to pass law school, you’re going to have to learn to explain yourself… to provide reasoning and facts to support a conclusion. I know, examining doesn’t actually require this, but give it a try sometime.

  84. “Here is an example of conjuring up magic to invalidate a patent. What in the world does pre-empt all uses mean? Now really. Think very hard about that before answering. And please include enablement in your reasoning. ”

    You’re right in that it is magic :) What does it mean? It means exactly what it says. All useful applications of the algorithm being used are caught by the claim. I’m not really sure how much more simply that can be broken down, is there any particular word you’re having trouble understanding? Enablement has nothing to do with the subject at hand so I will not be including it in the answer.

    “I think that this pre-empt all uses on a computer means that you want to make information processing method not eligible for patentability. ”

    Could be :) So what if it is?

    For the record let me go on ahead and say that it doesn’t mean that.

  85. Hey helpful, I appreciate your comment though I cannot place what question you feel I’m begging. In any event I’ll let you watch it turn out such that what I said is 100% correct in the event of these folks appealing to the CAFC.

  86. “Boss12 is just another pen name for 6. The bluster is a give away.”

    Actually he’s just copying me. But you’re right, his writing style in this thread is remarkably similar to my own. Perhaps we’re twins seperated at birth. Either way though, I do not use the name boss12.

  87. “The reasoning is that in the patent context we are talking about methods which must comprise steps or actions. In this context it is also understood that thinking is not considered to be within the pervue of either of those two words.”

    Are you familiar with the term “begging the question”? That’s something you might want to avoid when doing real legal analysis.

  88. “Why does this make a method ineligble? Does that mean that anything that humans can think is useless? What is the reasoning behind this?”

    The reasoning is that in the patent context we are talking about methods which must comprise steps or actions. In this context it is also understood that thinking is not considered to be within the pervue of either of those two words.

    Put that in your pipe n smoke it.

  89. “Just as a person could not hoist a beam of steal weighing hundreds of pounds hundreds of feet into the air.”

    I could probably hoist a beam weighing 201 lbs hundreds of feet into the air. I get a pulley and rope right?

  90. >>A method that simply involves deriving, say, a >>numerical value

    “Simply” is the wrong word. I think a baboon could spend its whole life and not be able to figure out the information processing methods that make movie recommendations.

    I think what has people so confused is that a machine that processes information is very similar to a brain. Oddly, when machines became stronger and more able at physical labor than people there was denial and anger. We are seeing that now as machines process information better than we do.

    And, no, practically, many methods of processing information that are done on a computer could not be done by a person because of the complexity. Just as a person could not hoist a beam of steal weighing hundreds of pounds hundreds of feet into the air.

    The key to being at peace with information processing methods is that almost all the methods that are useful are too complicated for people to carry out.

  91. “all methods and processes can be performed mentally. In fact every invention is performed mentally when read”

    AI, I’m sorry but that’s just plain wrong. The issue is what actions actually infringe the claim.

    A method that simply involves deriving, say, a numerical value, in which the end result of the method is the value itself, can be done entirely mentally. If the method further involves making use of that value in, say, an industrial process control system, then you haven’t performed the invention until derived value has been applied to an actual control system.

  92. NWPA,

    Are you discussing the current law, or what the law should be? What’s the best case law support that claims 1 and 14 recite patent eligible subject matter? It’s Diamond v. Chakrabarty isn’t it?

  93. If you read contemperaneous reviews of Benson, you will find that it was considered one of the worse SCOTUS opinions ever written in patent law.

  94. >>pre-empts all uses of the algorithm on a computer

    Here is an example of conjuring up magic to invalidate a patent. What in the world does pre-empt all uses mean? Now really. Think very hard about that before answering. And please include enablement in your reasoning.

    I think that this pre-empt all uses on a computer means that you want to make information processing method not eligible for patentability.

  95. “The claim did not pre-empt all uses (claim 14).”

    Even so, if it pre-empts all uses of the algorithm on a computer, the claim is still invalid per Benson.

  96. In fact, Boss12, I will say this even stronger: I have not met a registered patent attorney yet that hasn’t said that 101 jurisprudence is nonsense.

  97. Actual Inventor wrote:
    >Are the courts not required to rely on subject >matter experts for defining technical terms? If >so then I do not see what the problem is.

    The problem is that algorithm is one of those terms that are used by the anti-information processing methods group. The term is used as abstract is with many different meanings and really as a term to latch onto ridiculous arguments to invalidate a patent. Math, algorithm, abstract, mental step, all of these terms are used to conjure up magical reasons to invalidate patents.

    Boss12: if you understand 101 law, then you are better than all the attorneys I work with who all state that 101 makes absolutely no sense and is incomprehensible. Some of them have been do prep/pros and litigation for 40 years.

  98. To Actual Inventor: You’re right.

    In my previous post, everything after the phrase “That’s exactly right” is my commentary on the poor claim writing publicly demonstrated in Application Serial No. 10/014,192. That is, my commentary does not concern any 101 issues.

    My “btch-slapping” comments concern only the ridiculous breadth of Claim 1, and I am fully aware that “breadth” issues in claims are handled via 112, 102 and/or 103 rejections.

    Also, if I ever did write an invalid 101 rejection for a claim, then I would fully expect a btch-slapping from the Applicant.

    But, of course, that will never happen, because I am much too well versed in 101 law.

  99. Boss12 wrote: “That’s exactly right. Read Claim 1. Then, read the Specification and think about how the Applicant is not claiming his invention.”

    Then it seems to be a 112 issue and not 101 as I believe Ned pointed out. So to paraphrase your own words “Moreover, any “EXAMINER” who files a 101 rejection for 112, 102, 103 issues, should fully expect a btch-slapping from the Applicant.

  100. Ned Heller: “The vice here is that the claims were not specific to any use and therefor seems to be of the “wholly preempting” variety ala Benson and Flook.”

    That’s exactly right.

    Read Claim 1. Then, read the Specification and think about how the Applicant is not claiming his invention.

    Any Applicant who goes to the Board with that sort of claim should fully expect a btch-slapping.

    Moreover, any Applicant who files a patent application with such a claim should fully expect a btch-slapping from the examiner. Do yourself a favor and don’t waste my time with that POS claim.

  101. This decision states in effect that you can’t patent a computer-implemented algorithm that is useful simply for the purpose of improved computing. Also, this decision states an incorect fact conclusion. The claim did not pre-empt all uses (claim 14). One could still think the algorithm, teach it on a chalkboard, write it on paper, talk about it, print it in a text book, use it in a proof, etc. Are these not substantial uses?

  102. Ned I would bother to answer you but I don’t think you were serious in what you were saying. In fact, I think you purposefully made what you were saying outrageous or funny.

    “Why is it necessary that others have a right to use something I invented? ”

    HAHAHAHAHAHAHAHA, Ned, you know good and well that nobody has a “right” to use “something” you invented. You might deem it necessary to disclose something that they have a right to use, like math, in disclosing an invention, and thus donate that math to them but it is your “right” to keep the whole thing a secret.

    “But the Supremes say that I cannot patent it precisely because one may dissect the algorithm from the claim as a whole.”

    We’ve been over this Ned, and that is not the reason. You know the reason, and it has been explained to you in this very thread, as well as other threads. Stop wasting our time reverting to your pre-enlightenment days.

  103. Inviting Body Punches wrote: “I think that the reasoning behind denying mathematical algorithms is that they are not seen to arise from the hand of Man, but to already exist, awaiting only description.”

    The problem with this line of reasoning is that every invention that arises from the hand of man, already exist in the hands of nature. In other words, everything that has or will be invented was inspired by and/or modeled after something in nature, that already existed. For example, the airplane, including the theory of flight, clearly inspired by birds. Now, an aeronautical engineer may reduce some abstract idea from the theory of flight into a practical series of steps represented by an algorithm which may or may not be mathematical.

    But regardless of the nature of the algorithm, once reduced to that series of steps it is no longer simply a law of nature, or abstract thought. It becomes a process which will require physical acts to solve a real world problem.

    Why some flaming ideologies and even some members of the court want to ban certain processes from even being examined for patent eligibility is beyond me. I believe it was Ned upstream that asked the appropriate questions and trumpeted the clarion call to all inventors to do something about it. I for one plan to answer!

  104. Hagbard Celine wrote:

    ” am I wrong in thinking that it is well established that a method defined in terms that could be performed mentally is 101 ineligible? ”

    Hagbard:

    What’s wrong in this thinking is that all methods and processes can be performed mentally. In fact every invention is performed mentally when read. This is what is known in advanced cognitive psyche as a “Thinking Protocol”, or a condition action pair. Represented by the basic heuristic:

    If: I do ABC

    Then: EFG will result

    With “IF” being the condition and “THEN” being the action. Thus the pairing. Now if you execute the same heuristic by verbally communicating, then it becomes a “Thinking Aloud Protocol”

    Of course mere mental processes which would cover the first example have never been patentable subject matter as far as I know. However, according to Bilski Enbanc acts of verbal physical communication are not patentable either. If they were Bilski would have his patent now since his claims clearly and purposely read on verbal acts of communication.

    So the more pertinent question becomes, are the claims limited to pure mental processes from example one, or verbal physical acts from example two? If so, according to the courts the invention is not patentable subject matter.

    However when you execute the same heuristics with physical activity involving the limbs, exempli gratia, using your hands, you start to enter the waters of patentable subject matter. And while it’s clear scientifically, legally the waters are quite murky.

    For example, using your hands to execute a thinking protocol for curing rubber is clearly patentable subject matter and well settled law. However, using your hands to swing a club and strike a golf ball is not patentable subject matter according to the government in Bilski. This is not only logically inconsistent,( ala the flawed useful arts theory ) there is no basis for it in science and technology.

  105. NIght Writer Patent Attorney Wrote:

    “Actual Inventor, you are correct in the use of the term algorithm as it is used in computer science. The term has a very definite meaning. However, this is law and what that term means in law is not clear at all.
    The problem is that the courts simple don’t understand information processing. We will see what happens in Bilski.”

    Are the courts not required to rely on subject matter experts for defining technical terms? If so then I do not see what the problem is. The world is replete with neuroscientist working hand in hand with cognitive and computer scientist that can explain and objectively demonstrate exactly what processes, methods, and algorithms are.

  106. Ned Heller Wrote:

    “However, consider this: I claim a nail. I monopolize all its uses even if I disclose but one. So, why should we discriminate against mathematical inventions? I don’t get it. The invention is the algorithm, it has a disclosed use, it is claimed as a machine or process. Where is the real problem? What vice are we trying to prevent?”

    These are all excellent questions and I don’t see why we should discriminate against any science or technology when it comes to patentable subject matter. But, alas scientist and technologist are not the ones making the decisions here. If a panel of judges want to impose artificial and arbitrary rules that eliminate certain technology from being eligible for patent examination, how can that panel be stopped?

  107. “How creative is it for Mooney to enlist the aid of “Jules” and “BigGuy” to counter the ever increasing perception that he is, well, a simple baboon.”

    I’m pretty sure that I’m not on record regarding whether Mooney is a baboon, but thanks for thinking of me. Merry Christmas to you, as well.

  108. Actual Inventor: I would beat anyone, in any court, in 5 minutes or less

    I guess the truckstop is no longer the preferred venue for this sort of thing.

  109. “…without an ounce of creativity,”

    How creative is it for Mooney to enlist the aid of “Jules” and “BigGuy” to counter the ever increasing perception that he is, well, a simple baboon. It’s not hard to tell that Jules and BigGuy are the same angry little baboon troll. What’s really funny is when they argue with each other from time to time just to keep up appearances…

    Mooney

    Me thinketh thou (and thine puppets) doth protesteth too much…

  110. A previous post of mine didn’t make it to the board, dealing with mathematical algorithms. I’m not sure why Ned restricted his earlier comment to mathematical algorithms, as I wouldn’t necessarily characterize the claims at issue here as mathematical algorithms.

    NWPA asked for a definition of a mathematical algorithm. Although I am not a mathematician, I advance this brief and admittedly hastily-cobbled-together attempt at a definition:

    A mathematical algorithm is one or more logical operations performed upon one or more variables, which operations comport with the defined axioms of mathematics. Said operations may or may not employ numbers or number theory, and said variables may or may not be signifiers.

    Comments? Be kind.

    I think that the reasoning behind denying mathematical algorithms is that they are not seen to arise from the hand of Man, but to already exist, awaiting only description. There is of course a discovery issue here–are they patentably discovered, or not? I guess the prevailing view is that they are not, they merely hang around like apples on a tree waiting for someone to come along and pick one.

  111. Hagbard, the answer to your question no. 1 is not settled law. Bilski will likely shed some light on this.

  112. Thanks NWPA, but am I wrong in thinking that it is well established that a method defined in terms that could be performed mentally is 101 ineligible?

    Also, you didn’t answer the final question:

    2. Assuming that the answer to 1 is “yes”, should that be enough to make the claim allowable?

    I take your answer to this would be yes, but is that predicated on the “pure method” being eligible? If the pure method is ineligible, is the system claim eligible AND allowable?

    I’m being very careful to be neutral about this – I don’t have an ax to grind and I do hope to learn something.

  113. Althogh in fairness, I’ll say to your first question that I think it is a policy question. The second quetion, I don’t think is a policy question.

  114. >>Apart from anything else, it could be >>performed mentally, right?

    Why does this make a method ineligble? Does that mean that anything that humans can think is useless? What is the reasoning behind this?

    And, to your second question: yes it should be eligible for patentability under 101 if it is on a machine. It is a machine for goodness sakes. A machine that is doing what people do and may in fact be paid to do. How in the world could a machine that is doing what people are paid to do not be eligible for patentability? That simply does not square with the intention of the patent system. No matter how you want to slice and dice what that machine is.

  115. Let’s edit out the machine elements from that claim:

    14. A method for identifying one or more mean items for a plurality of items, J, each of the items having at least one symbolic attribute having a symbolic value, the method comprising:

    computing a variance of the symbolic values of the
    plurality of items relative to each of the items; and

    selecting the at least one mean item having a symbolic value that minimizes the variance.

    Let’s assume the method is novel and non-obvious.

    Anyone disagree that this method is 101 ineligible?

    Apart from anything else, it could be performed mentally, right?

    So add in: a memory for storing computer readable code; and
    a processor operatively coupled to the memory, the processor configured
    to recreate the actual claim.

    Again, assuming that the method itself is novel and non-obvious:
    giving reasons for your answers –
    1. Should that be enough to make the claim 101 eligible?
    2. Assuming that the answer to 1 is “yes”, should that be enough to make the claim allowable?

  116. You know one more remark about the PTO and patentable subject matter: the PTO has simply not figured out that the way to handle information processing applications is with algorithms.

    In computer science the way to solve a problem is the application of known algorithms to the problem. That is how problems are solved. The way to reject applications under 103 is to apply apply known algorithms to the problem and say that the application of these known algorithms to the problems is an obvious solution. This involves taking algorithms like the one above and applying it to the solution of a problem. That is how problems are solved in computer science.

    You see why information processing has been so hard for the PTO to get its arms around? They are saying that the algorithms are abstract, which means they don’t have the algorithms to use for their 103 arguments. IF they would wake up and figure out what an abstraction is in computer science and how problems are solved in computer science, 103 arguments would become routine.

    So, PTO the way to solve your problems is to broaden the patentable subject matter. Isn’t that ironic. The more you tighten your belt the harder it is to reject applications. And the more you try to use your old methods of rejecting applications the harder it is to reject an application.

    You have to bend. You have to use the methods that are used in the art.

  117. You see restroom boy is certainly a troll. Notice that this is clear attack on the person. And, this is likely MM as the use of the ding, ding is one of MM’s favorites.

  118. Actual Inventor, you are correct in the use of the term algorithm as it is used in computer science. The term has a very definite meaning.

    However, this is law and what that term means in law is not clear at all. A very famous paper by (his name escapes me but he is the one that wrote the treatise on copyrights) said that Benson had used the term algorithm in at least 8 different ways.

    The problem is that the courts simple don’t understand information processing. We will see what happens in Bilski.

  119. >>without an ounce of creativity.

    Actually there Jules, I think that you will find my 101 analysis is original particularly since I developed these arguments some 6 years ago before 101 became a big issue. I also think that my arguments have been picked up and used by some of the writers of the briefs in Bilski. I know that I have made my arguments in person to some of the writers of the Bilski briefs.

    Also, I wonder if you aren’t really MM as a troll is something I am certainly not.

    If you are having trouble distinguishing between trolls and contributors, then you might try to analyze the post to see if the poster is addressing the issues fairly and whether they are actually learning and developing and citing to case law to support thier arguments.

    Here, look at some of MM’s post regarding abstract. You will see that he repeatedly misuses the term, and then is corrected, and then misuses the term again in the next post in exactly the same way. He also trys to get other people to do the work by continually asking questions and not providing answers himself. That is what a troll does. I stand by my arguments. I do not shift my arguments and try to draw people into a false sense that I am flexible. I have found that arguing with a troll is a bit like thinking out loud in that it can help to sharpen your thinking about your views even if the troll is not a real participant in the argument.

    By the way, one need only go to Newman’s dissent to understand the term abstract in patent law. I don’t think that ANY patent attorney would disagree with the definition Newman gives, except for a troll.

    And as for the baboon remark, well, you are beginning to look like a baboon to me too.

  120. Inviting Body Punches |wrote: “Ned–An algorithm by itself is abstract, and does not pass 101.”

    Well subjectively, you can define an algorithm anyway you want. But if you define the term with science and technology, an algorithm is not abstract. Indeed, an algorithm is the opposite of abstract.

    In fact, if objective testable scientific evidence was the sole basis for proving an algorithm was not abstract, I would beat anyone, in any court, in 5 minutes or less.

  121. “I guess “bob” doesn’t use his brain.”

    One thing I can say about the trolls, they sure know how to slaughter a joke with endless repetition (e.g. baboon). That and they all sound the same, without an ounce of creativity.

  122. Malcolm Mooney said:

    This has been explained to you before but in the spirit of the season we’ll try again: unlike the nail, the mathematical “invention” is an abstraction, something that “exists” with virtually identical vitality in a human brain and in a computer.

    Not true of a physical object (i.e., a nail). You can’t infringe a composition claim by thinking about it UNLESS the claimed composition is “a brain comprising a thought about itself”.

    Malcolm, in the spirit of the season let me explain this to you: you can’t infringe any claim unless you make, use, offer to sell, sell or import it. 35 U.S.C. 271.

  123. Malcolm, et al.,

    I can see the vice in patenting laws of nature per se. They are the common resources of all mankind.

    Laws of nature can be expressed mathematically. But it does not follow that all mathematical algorithms deserve some exemption from patent protection. The inventions of man are only known to others by disclosure and use. No one else has a right to them. If I keep the algorithm as a trade secret, who am I harming: all mankind? Bull.

    So, if I disclose my new algorithm via some public use, the Supreme Court says I cannot protect it from being copied by others? Why? Why is it necessary that others have a right to use something I invented?

    A useful mathematical algorithm claimed in the context of a digital computer or encoded media is something real, something tangible, something physical. It is not an abstraction, even while its essence may be abstracted by dissection. But the Supremes say that I cannot patent it precisely because one may dissect the algorithm from the claim as a whole.

    There is a lot of horrible bootstrapping and injustice in the Supreme Court jurisprudence on this issue. We should demand, not argue, that the Supreme Court get it right this time in Bilski.

  124. So, your position is that if a human brain could carry it out theoretically then the method or machine shouldn’t be eligible for patentability. That is your position.

    Likely true for the method, less clear for the machine (e.g., if the machine were claimed entirely in bona fide structural terms, it should remain patentable under 101).

  125. NWPA,

    Keep in mind that Malcolm does not understand what the word “promote” means, and believes that an asterisk is by the word in the constitution.

  126. >>Are you sure that one follows from the other?

    I ask you what is the difference between information processing methods and other types of methods that would make information processing methods not in need of the encouragement and the other methods in need of the encouragement.

  127. “Why would we not want machines that can do what we do?”

    Night Writer, I’m not sure how you get from “shouldn’t be eligible for patentability” to “we don’t want it.” Are you sure that one follows from the other?

  128. Okay, MM, you can duck and dodge all you want.

    What you are saying is that if you can think something then it shouldn’t be eligible for patentability. So, your position is that if a human brain could carry it out theoretically then the method or machine shouldn’t be eligible for patentability. That is your position.

    Which is on its face ridiculous. Why would we not want machines that can do what we do? Sounds like baboon thinking to me.

  129. Okay, well, what is a thought?

    Gosh, NWPA, I suppose the answer depends on what the meaning of “is” is.

    This is a fun game.

    [eye roll]

  130. >>Thoughts: abstract.
    >>Mathematical formulas: abstract

    There you go again. Okay, well, what is a thought? Does that mean that anything I say is an abstraction? What are mathematical formulas? And what aren’t mathematical formulas?
    The problem is that with modern information processing we have come to understand better that many of our old concepts are flawed and imprecise.

    You say mathematical formula. Do you mean then symbols that may be replaced by integers or real numbers? What if the symbols represent something other than integers or real numbers?

    In engineering schools it is taught to pick the right level of abstraction and work there. As long as you can work your way up and down the abstraction level, you are fine.

  131. >>The hilarious thing, NWPA, is that even after >>the oral hearings in Bilski

    Unless you have a crystal ball, you shouldn’t be so sure what decision will come out of Bilski. You after all are the great ape that said the SCOTUS wouldn’t take Bilski and I said they would.

    Besides, again you are appealing to law that may be and also saying you don’t care what reality is but only what the law is going to be according to your crystal ball.

    I think that the SCOTUS is not going to remove information processing methhods from being eligible for patentability. I think even Stevens may come down in our favor.

    Climb out of your baboon suit.

  132. Well, gee, you certainly did not address the issue of the definition of abstraction is in patent law.

    Thoughts: abstract.
    Mathematical formulas: abstract

    Either of the above disguised as non-abstractions by reference to “magic words”: legally abstract

    Enjoy.

  133. >>Nobody should be interested in anything this >>particularly judge has to say about what is >>patentable and what isn’t.

    Well, gee, you certainly did not address the issue of the definition of abstraction is in patent law. Quite a good attack on the person, though, for a baboon.

  134. Please see Newman’s dissent in Bilski to to understand abstract.

    This is the same Newman, you’ll recall, who believes that there are patentable compositions whose physical properties and/or structure can not be known or described.

    Nobody should be interested in anything this particularly judge has to say about what is patentable and what isn’t.

  135. What is a mathematical algorithm in patent law?

    What is the test for a mathematical algorithm?

    The hilarious thing, NWPA, is that even after the oral hearings in Bilski you seem to think that questions like these are “show stoppers” of some sort. They are not. None of the Supreme Court Justices care whether some physicist can describe “information” in a way that would blur the distinction between a physical object and an abstraction. Do you understand this? Feel free to disagree with the Supremes, but at least understand the reality of the situation. It’s not going to change. Ever.

  136. What is a mathematical algorithm in patent law?

    What is the test for a mathematical algorithm?

  137. NWPA–

    Please note that Ned explicitly targeted his comment to mathematical algorithms in his preamble.

    My response to him was likewise limited to mathematical algorithms.

  138. DCTYSUnder the broadest reasonable claim construction, compositions of matter include virtual composition of matter or perhaps even imagined compositions of matter.

    You must be mistaking NWPA for a Supreme Court justice.

    That’s a huge mistake.

  139. >>Come on Mooney … I know you can do better. >>Your USPTO training hasn’t kicked in yet to its >>fullest. If you cannot reject a claim under 101, >>then you aren’t trying hard enough. We know you >>have it in you … step up your game.

    You’re too late. He has turned into a baboon.

  140. “You can’t infringe a composition claim by thinking about it UNLESS the claimed composition is ‘a brain comprising a thought about itself’.”

    Sure you can. Under the broadest reasonable claim construction, compositions of matter include virtual composition of matter or perhaps even imagined compositions of matter. These exist, respectively, within a computer and the human mind.

    One can model processes performed by devices in a computer or a human mind, and thus, process claims can also be infringed within the human mind.

    Come on Mooney … I know you can do better. Your USPTO training hasn’t kicked in yet to its fullest. If you cannot reject a claim under 101, then you aren’t trying hard enough. We know you have it in you … step up your game.

  141. Baboon, you can’t infringe an information processing method that is carrried out on a computer by thinking.

  142. Information takes space and energy to represent. And, to transform information requires space, energy, and time.

    Again, MM is harking back to his angels spinning in his armpit analogy.

  143. Body,

    An algorithm by itself is abstract? Sorry. Nope. A method is not abstract. A method of processing information is not abstract. Please see Newman’s dissent in Bilski to to understand abstract. I don’t know what the definition of algorithm in law is as the SCOTUS tried to define it in Benson and by some contemperaneous accoutns there were as many as eight different definitions of algorithm in Benson.

    This business of all uses is an attempt to tie information processing to an equation like e = m * c * c. So, the great intellects of the day seem to think that an information processing algorithm is like a natural law.

    Of course, some baboons will disagree with me.

  144. So, why should we discriminate against mathematical inventions? I don’t get it.

    This has been explained to you before but in the spirit of the season we’ll try again: unlike the nail, the mathematical “invention” is an abstraction, something that “exists” with virtually identical vitality in a human brain and in a computer.

    Not true of a physical object (i.e., a nail). You can’t infringe a composition claim by thinking about it UNLESS the claimed composition is “a brain comprising a thought about itself”.

  145. Ned–

    An algorithm by itself is abstract, and does not pass 101.

    One or more practical implementations of the algorithm may be possible to claim.

    When you try to claim all possible uses of the algorithm, that is effectively claiming every practical implementation of the algorithm, which is effectively the same as claiming the algorithm itself.

    Which does not pass 101.

    But I do feel your distaste for the logic.

  146. Something is wrong with the whole analytical framework for mathematical algorithms.

    A new algorithm is made by man. Check.

    It must have some disclosed utility. Check

    It must be claimed as a machine, process, etc. Check again.

    The only possible vice in the claim is that by claiming the algorithm, one claims all possible uses of it, not just the disclosed use. The vice is not in Section 101, IMHO, but in Section 112, p. 1. This, rather, is an O’Reilly v. Morse problem, not a Section 101 problem.

    However, consider this: I claim a nail. I monopolize all its uses even if I disclose but one.

    So, why should we discriminate against mathematical inventions? I don’t get it. The invention is the algorithm, it has a disclosed use, it is claimed as a machine or process. Where is the real problem? What vice are we trying to prevent?

  147. One thing that occurred to me about why this reasoning is so ridiculous is that these methods of information processing are tied to a particular form of processing that is the von Neumann architecture. These types of algorithms are ill suited to massive parallelism or other types of computing that are not von Neumann.

  148. Certainly that is not abstract as a PHOSITA could use that information processing algorithm on any number of applications.

    I guess an oven is abstract or a fan.

    The SCOTUS said in Deener that the method of processing grain should apply to all types of grain so I guess under the board’s reasoning the SCOTUS got it wrong in Deener.

  149. on an unrelated note – the CAFC has just released the i4i v. microsoft appeal decision.

    complete victory for i4i.

  150. jv – can you point out where one can review this Board standard operating procedure list of precedential qualifications?

  151. Six says,

    “TBH though I don’t see what was precedential about this”

    The Board’s standard operating procedures include nine reasons why a particular opinion can be deemed “precedential”. Only 2 or three deal with creating new law. I’ll bet that you can easily pick a couple of possible reasons from the list.

  152. “(1) Is the claim limited to a tangible practical application, in which the mathematical algorithm is applied, that results in a real-world use (e.g., “not a mere field-of-use label having no significance”)?

    (2) Is the claim limited so as to not encompass substantially all practical applications of the mathematical algorithm either “in all fields” of use of the algorithm or even in “only one field?”

    LOLLOLOLOLOLOLOLOLOLOL, hey Ned, looks like I have some readers at the BPAI! They just stated my step 1 around backwards and wrote down my two prong test for you and AI that comes from Benson.

    I hope they appeal it and the CAFC and USSC confirm! Imma lmfao. More than I already am!

    TBH though I don’t see what was precedential about this. The USSC themselves created this test in Benson and it hasn’t ever been changed.

  153. JV,

    A bigger issue in my opinion than “where is the cured rubber” is what does “symbolic value” and “symbolic attribute” mean? I checked the published Gutta application, and these terms are not defined anywhere, at least not explicitly. In other words, I would have rejected these Claims on 35 USC 112, second paragraph, grounds as being “indefinite.”

  154. Former: I don’t know about “making up” the law “willy-nilly” but I think the EPO is playing the same game as is detected here at the USPTO (Small world, eh? Do you think the two Patent Offices ever talk to each other?). The Patent Office, internally, works out what is a sensible view of the law, and what legal line might well commend itself today to the higher judicial instances. It then adopts that line and, implicitly, challenges the aggrieved “loser” to do something about it (if they fancy) by trying their luck at the appeal instance.

    Of course, at the EPO, the effect cuts both ways, since the EPO caselaw is predominantly worked out in full-blown disputed adversarial opposition proceedings.

    At the USPTO, by contrast, I suppose it all looks a bit one-sided, against Applicants.

    Seems OK to me, provided the PTO is cute enough correctly to assess what, if given a fair wind today, the upper courts would decide.

  155. EG,

    Maybe Benson and Flook contain some bad law, but are these claims even patentable under Diehr? under State Street? Where is the “cured rubber” in these claims?

  156. Paul F. Morgan – Yes, the decision most likely would have been the same if the Board had simply used prior decisions of the Court. What seems most troubling about this decision is the Board is making up their own law. This has been a frustrating and disturbing trend coming out of the PTO. Examiners and the Board making stuff up willy-nilly, rather than just applying the law as it currently stands. A lot of the decisions would ultimately be the same, but it’s just wrong how they’re going about it.

  157. JV,

    They could be anticipated. I’m just bothered by the seeming inconsistency in how patent-eligibility is applied by the BPAI since Bilski. Paul Morgan is on the right track that these Gutta claims probably wouldn’t have survived based on SCOTUS’ Gottschalk v. Benson and Parker v. Flook (both bad decisions in my opinion, especially Flook).

  158. Would or could not this Ex Parte Gutta BPAI Precedential decision have been the same under prior Sup. Ct. authority, irrespective of In re Bilski? [As a premptive algorithm which even the Sup. Ct. Diamond v. Chakrabarty decision noted had been held unpatentable.]

  159. Sean says: “The identical is unfeigned (flush solon so) of the ‘scheme’ involve at issue.”

    Poetry.

    If this is generated by a computer program, it’s pretty impressive. It makes almost as much sense as (and is more grammatical than) some of 6’s postings…

  160. EG says,

    “it’s hard to understand how the later claimed subject matter isn’t at least potentially patent-eligible subject matter under 35 USC 101″

    Maybe the applicant simply failed to write one of those potentially patentable claims?

    But more to the point, if the current claims are drawn to a naked mathematically algorithm, are you saying they could not be anticipated by a valid patent that disclosed practical application of the algorithm, with completely different claims than in this app?

  161. BigGuy,

    I’ve got no problem with these claims being rejected over a prior U.S. patent as being anticipated under 35 USC 102. Where I find the logical disconnect is that if the granted patent discloses subject matter that was deemded patent-eligible under 35 USC 101 and is considered relevant enough under 35 USC 102 to be anticipatory of later claimed subject matter, it’s hard to understand how the later claimed subject matter isn’t at least potentially patent-eligible subject matter under 35 USC 101. Again, I find the current use of 35 USC 101 as screen by the BPAI to be simply based on using the nonsensical Bilski test in a completely subjective manner.

  162. Anyone who has a problem with this decision obviously has far bigger problems to deal with. It’s a purely generic, abstract algorithm tied only in the flimsiest way to a processor. The “memory for storing computer readable code” doesn’t even cooperate with any other element of the claim. You don’t need Bilski to deep-six this, and nothing SCOTUS is going to say on the subject will change that.

    Personally I think it’s just Philips probing the boundaries.

  163. “my memory of what I did last night is new and non-obvious and very useful. But it’s not a patentable thing”

    Malcolm, I’m not sure about 35 U.S.C. 101, but I’m sure your memories of last night run afoul of 21 U.S.C. 841.

  164. It’s not readable why you are conveyance the supply up when every commonsense organism agrees that not all “multipurpose” things are patentable. For instance, my remembering of what I did conclusion period is new and non-obvious and rattling valuable. But it’s not a patentable aim, still if I expound it as beingness embodied in a piece or “fertiliser scheme.” It is, far many accurately, an construct. The identical is unfeigned (flush solon so) of the “scheme” involve at issue.

    ——————
    Sean Cruz
    Lawyer Marketing

  165. the claim:

    “14. A system for identifying one or more mean items for a plurality of items, J, each of the items having at least one symbolic attribute having a symbolic value, the system comprising:

    a memory for storing computer readable code; and

    a processor operatively coupled to the memory, the processor configured to:

    compute a variance of the symbolic values of the
    plurality of items relative to each of the items; and

    select the at least one mean item having a symbolic value that minimizes the variance.”

    Oh awesome, it’s a machine that does nothing!

  166. “can the BPAI create law that supersedes CAFC precedent?”

    No …. which is why any “precedential” opinion by the BPAI should be taken with an ocean full of salt.

  167. Ned: I might be wrong, but there is great utility in giving something such a rating even if the particular algorithm here seems old.

    I don’t know about “great” utility but, yes, “rating things” can be useful (although quite often not useful enough to meet 101’s utility requirement, correctly applied).

    But it’s not clear why you are bringing the issue up when every reasonable person agrees that not all “useful” things are patentable. For example, my memory of what I did last night is new and non-obvious and very useful. But it’s not a patentable thing, even if I describe it as being embodied in a composition or “organic system.” It is, far more accurately, an abstraction. The same is true (even more so) of the “system” claim at issue in the case here. It’s an unpatentable algorithm, poorly disguised as a thing.

  168. “can the BPAI create law that supersedes CAFC precedent?”

    I don’t see why not. The CAFC creates law that supersedes Supreme Court precedent all the time… And my friendly neighborhood patent examiner generally feels free to supersede everybody.

  169. This sounds like the ELO chess algorithm where a rating is chosen to minimize variances.

    Ditto its use to rate the quality of teams in sports.

    I might be wrong, but there is great utility in giving something such a rating even if the particular algorithm here seems old. The vice here is that the claims were not specific to any use and therefor seems to be of the “wholly preempting” variety ala Benson and Flook.

  170. “Claims are deemed patent-ineligible yet can be partially rejected as anticipated over another granted patent. How is it then logical to deem these claims to be patent-ineligible?”

    Sorry, EG, I don’t see the logical inconsistency. That claimed subject matter is unpatentable under Section 101 doesn’t mean that it doesn’t exist – why can’t it be anticipated, or even obvious, in view of prior patents? If your concern is that the same general subject matter is claimed in the prior patent, I would suggest that the validity of a prior patent has no bearing on its relevance as prior art.

  171. I can’t imagine why the BPAI would make this case precedential when a SCOTUS smack-down of the MoT test is apparently imminent.

  172. I remember seeing this case come out when it wasn’t precedntial. Claims are deemed patent-ineligible yet can be partially rejected as anticipated over another granted patent. How is it then logical to deem these claims to be patent-ineligible? Another “poster child” for why the Bilski “machine or transformation” test must go.

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