by Paul Craane of Marshall Gerstein & Borun
In the wake of Bilski, the United States Patent and Trademark Office has provided unclear, and potentially incorrect, guidance to the Examining Corps regarding the application of 35 U.S.C. 101. The guidance instructs examiners to reject claims if the claims fail to meet the machine-or-transformation (MoT) test, absent some "clear indication that the method is not directed to an abstract idea." This application of Bilski effectively ignores the guidance provided by the opinion to the effect that the MoT test is not the sole test for patent-eligible processes under Section 101.
According to existing precedent, the examiner has the burden to make out a prima facie case before the burden shifts to the applicant. Given that the examiner has the burden and given that the MoT test is not the sole test, a failure to meet the MoT test should not automatically result in rejection of a claim. In fact, if failure to meet the MoT test did necessarily result in the rejection of a claim, then the USPTO would be using the MoT test as the sole test for patent-eligibility, contrary to Bilski.
Of course, the guidance does not suggest a rejection based solely on the MoT test, in that the examiner must still look for a clear indication that the method is not directed to an abstract idea. Even though there is an additional step, this procedure would appear to shift the burden from the examiner to show patent-ineligibility to the applicant to affirmatively show patent-eligibility before the examiner has made out a prima facie case of patent-ineligibility. According to Bilski, there are only three exceptions to patent-eligibility: laws of nature, physical phenomena, and abstract ideas. In accordance with Bilski, unless one of these exceptions is shown, the examiner can hardly be said to have made out a prima facie case of patent-ineligibility, such that the burden should shift to the applicant.
Consequently, the USPTO should amend its guidance to clarify that the examiner has an obligation to show that the claim recites an abstract idea (or law of nature or physical phenomena) to reject the claim, rather than simply indicating that if they should reject after applying the MoT test if they fail to find a clear indication that it does not recite an abstract idea.
Note: As per our usual rule, this post does not necessarily reflect opinions of Mr. Craane's firm or its clients.
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The comments were well worth the read. Patent attorney humor is some of the best/worse. 🙂
Ya mean like Kappos and his “culture change” of
“Quality does not equal Reject ?
AI: The competent and intelligent men and women of the Business Method Arts Patent Unit will do as they always have done. Follow the law and obey the rules. Thats why as Dennis has pointed out, business method patents are being granted at an all time high.
Patent grants are at an all time high because examiners are continuing to do what they’ve always done? I can’t argue with logic like that.
Oh wait, maybe patent grants are at an all time high because of Bilski, even though the PTO was already embarking on its record pace back in January. I suppose there couldn’t possibly be some other reason for it.
Pssst IANAE,
Try to suppress the glee in your posts when you are smiting AIs with the (obvious) rogue examiner tactic of following the letter of guidance and violating the spirit (and substance) of the law.
You are less likely to get smacked upside the head by AI’s (I realize that you are still convalescing over the Bilski decision, but serving up softballs to AI won’t make you feel better).
Posted by: 6 | Jul 26, 2010 at 09:13 PM: End Book 1.
_____
What a waster of tax payers money. Mean while my nephew is at the state capital taking his bar exam.
AI: And ya gotta know MM/Inane is already drinking. 😀
Posted by: IANAE | Jul 29, 2010 at 10:20 AM : Pretty sure I was drinking by 8:20 PM yesterday. Is that a problem for you?
No, the guidance doesn’t have the force of law, but it does have the force of making examiners reject your application, which has the force of taking you five years and a big pile of money to appeal to someone competent to decide what the “force of law” really is. Pretty forceful, actually.
Posted by: IANAE | Jul 29, 2010 at 10:20 AM:
You must still be drunk. The Supremes have already ruled and the “Guidance” is already adjusted to comply. The competent and intelligent men and women of the Business Method Arts Patent Unit will do as they always have done. Follow the law and obey the rules. Thats why as Dennis has pointed out, business method patents are being granted at an all time high.
Incompetent rogue drunk examiners like you and 6, that have the power of supreme court justices and can ignore the law only exist in your imaginations, and perhaps this blog.
AI: And ya gotta know MM/Inane is already drinking. 😀
Pretty sure I was drinking by 8:20 PM yesterday. Is that a problem for you?
No, the guidance doesn’t have the force of law, but it does have the force of making examiners reject your application, which has the force of taking you five years and a big pile of money to appeal to someone competent to decide what the “force of law” really is. Pretty forceful, actually.
AI,
Push 6 over the edge?
He’s always been over the edge – no push required.
“The guidance points out that because it is not substantive rule making, it does not have the force and effect of law”
Perpetual LOL
Posted by: ping | Jul 27, 2010 at 11:00 AM
_____
LOL!
The anti Patent Crowd just can’t catch a break!
Already as loopy as he can be, this is really gonna push 6 go over the edge. And ya gotta know MM/Inane is already drinking. 😀
Sorry for not getting back to you Broje.
I have laid out for you how it will be. You can either listen, and understand, read it again if need be, or be in for a “surprise” one day when what I have said comes up in a case of yours.
Your recitation of cases appears to be nothing more than the courts telling (actually “implying to”) you that Flook and all the rest of such applications could, if they wanted, claim a specific application of the abstract idea, and that is true. Save for the instance where that is the only application of the abstract idea. In that instance you are still breaking the judicial exception. You know you are. Stop fighting it.
As for my understanding of preemption being off, well, gal, I have the luxury of letting time show that I’m right. I stand to lose nothing if I’m wrong. You on the other hand have clients whom you’re responsible for and perhaps might lose a penny or two. I suggest you collect opinions of your friends.
“since revised guidelines are now here”
fixed.
And how!
At first I wondered whether this burden-shifting on the part of the USPTO might be a deliberate attempt to minimize the number of questionable patents. After all, David Kappos has recently given priority to improving patent quality. But it looks like it was just an oversight, since revised guidelines are now in the works.
“So long as the claimed process is limited to a practical application of a fundamental principle to transform specific data, and the claim is limited to a visual depiction that represents specific physical objects or substances, there is no danger that the scope of the claim would wholly pre-empt all uses of the principle.”
That is just more misguided nonsense almost on the order of “useful, concrete and tangible”. First off, they’re basing this blanket statement wholly on MoT being the sole test, but lets toss that aside for a minute to see why it is truly absurd. If the “principle” as they call the abstract idea, has only one use and it is claimed then the principle is wholly preempt. Indeed, that was PRECISELY what happened in Benson.
Your understanding of “preemption” is simply wrong, or at least incomplete. The data in Benson was not defined to represent anything in the real world. There was no externally observable output, like a display, or particular machinery recited that applied the output in any way, thus no application. It’s the particular application of the underlying principal or algorithm that avoids preemption. I refer you again to the section of Diehr that clarifies this issue when it discusses precisely what is wrong with the Benson and Flook claims, emphasis mine.
“A principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right.” Le Roy v. Tatham, 14 How. 156, 175 (1852). Only last Term, we explained:
[A] new mineral discovered in the earth or a new plant found in the wild is not patentable subject matter. Likewise, Einstein could not patent his celebrated law that E = mc2; nor could Newton have patented the law of gravity. Such discoveries are ‘manifestations of * * * nature, free to all men and reserved exclusively to none.’ Diamond v. Chakrabarty ____ U.S. ____, ____, 206 USPQ 193, 197 quoting Funk Bros. Seed Co. v. Kalo Co., 333 U.S. 127, 130, 76 USPQ 280, 281 (1948).
Our recent holdings in Gottschalk v. Benson, supra,andParker v. Flook, supra, both of which are computer-related, stand <209 USPQ 8> for no more than these long established principles. In Benson, we held unpatentable claims for an algorithm used to convert binary code decimal numbers to equivalent pure binary numbers. The sole practical application of the algorithm was in connection with the programming of a <450 U.S. 186> general purpose digital computer. We defined “algorithm” as a “procedure for solving a given type of mathematical problem,” and we concluded that such an algorithm, or mathematical formula, is like a law of nature, which cannot be the subject of a patent.9
Parker v. Flook, supra,presented a similar situation. The claims were drawn to a method for computing an “alarm limit.” An “alarm limit” is simply a number and the Court concluded that the application sought to protect a formula for computing this number. Using this formula, the updated alarm limit could be calculated if several other variables were known. The application, however, did not purport to explain how these other variables were to be determined,10 nor <450 U.S. 187> did it purport “to contain any disclosure relating to the chemical processes at work, the monitoring of process variables, or the means of setting off an alarm system. All that is provided is a formula for computing an updated alarm limit.” 437 U.S.,at 586, 198 USPQ at 195 .
“The guidance points out that because it is not substantive rule making, it does not have the force and effect of law”
Perpetual LOL
There is a new post from the USPTO regarding Bilski (link to edocket.access.gpo.gov). This is a much more detailed presentation that the earlier one-page guidance.
The new guidelines refer to themselves as a “supplement,” but no longer focus so heavily on the machine or transformation (MoT) test. Instead, the newest guidance suggests more of a “totality of the circumstances” approach, with several different factors identified to determine if a method is a patent-eligible/patent-ineligible abstract idea. No one factor is to be determinative. Moreover, the examiner is cautioned to present an analysis of the factors supporting patent-ineligibility when stating a prima facie case.
The new guidelines also impress upon examiners the need for compact examination – meaning all rejections should be raised in the first action, rather than simply a rejection under 101 for patent-ineligibility except in extreme cases (see Section II).
The guidance points out that because it is not substantive rule making, it does not have the force and effect of law and “any perceived failure by Office personnel to follow this guidance is neither appealable nor petitionable.” As such, while there is a request for any comments you might have on the guidelines, the request for comments is not intended to turn this into a formal rulemaking procedure.
6 wrote: “And AI, you jackwad, your rtarded attempt to come up with some sort of “DCAT”, which is, by your definition, nothing more than the FWA test was (see In Re Bilski above on page 19 at the top) is kiddylolsically ez to stomp on. FWA, or “DCAT” as you like to know it as, was firmly stomped out in In Re Bilski before even Bilski v Kappos came out. Sorry, bucko.”
_______
6, The Freeman Walter Abele test of the old C.C.P.A., now the CAFC and the DCAT, short for Diehr Concept and Application test, resulting from the Diehr Supreme Court decision of 1980 are not the same.
One of the most important differences being the FWB test dissects the claims elements into patentable and non patentable subject matter and the DCAT analyzes the claims as a whole, as is required by the SCOTUS.
Furthermore your implication that a test (DCAT) created by the SCOTUS was invalidated by the CAFC in Bilski is wrong since the Supreme Court’s decision takes precedence over the CAFC.
Your sophmoric attempt to conflate the issue will not change the fact that The SCOTUS has ruled in Bilski that;
Claims Must Be Taken as a Whole.
Business Methods are the Law of the Land.
Two Test exists which are MOT and DCAT.
Just accept it already.
And now, a short tale of magic, intrigue and bravery.
The Tale Of Bilski
Book 1: The Past Reemergent
In the days of yore, the CAFC, and its predecessor court, in their infinite wisdom, long ago forgot the wisdom of Benson, Flook and Diehr, preferring instead to carve their own path in order to accomodate what they considered to be the “new technology” and enable valuable claims thereto. Stealing thus from the poor to enrich the rich business men of that age.
It was in those days that a judge by the name of Rich may have had something to do with this nonsense, though tales are often in conflict over this point, and he is considered an otherwise venerable judge regardless. Every man being alotted thereto his share of flaws after all.
In any event, the CAFC had chosen to blaze a new trail opening the door to all manner of nonsensical claims having to do with abstract ideas being preempt left and right. They did endeavor to create new tests through black arts, and sometimes accidentally created new tests (See SS and ATT). Tests which indeed, did make it appear as if the CAFC were usurping the USSC’s own prohibition on abstract ideas, and claims that preempt such.
Then, one day, an examiner appeared. Common legend has it that he did ride a white horse on that day, and didst carry with him the armaments of his trade, prior art in the right hand and a copy of the laws in the other.
The examiner’s name is forever lost to the mists of time and memory, but his deeds live on and will be spoken of for centuries to come. It was on a day reported to be around the year of our lord twenty hundred and eight that the examiner did issue forth a proclamation that certain claims of a specific application did not comply with the patent laws. It is said amongst the common-folk that he did proclaim that indeed the claims were directed to an abstract idea and were thus not directed to the technological arts, otherwise known as the Useful Arts. His proclamation is said to have been long on substance, yet short on analysis. It is commonly believed that this lone examiner, standing firm against aggression on all sides, did steal back some small portion of what the public ought have from the hands of those looking to abuse the powers granted by the crown against the people of the land.
Some days later, an errand boy or girl didst issue forth a response to the examiner in very flowery language exclaiming where his master having been unsatisfied with the proclamation against his claim to property he felt he was justly entitled to would appeal to authority.
Thus it was sometime later when the case was transferred from the hands of the steadfast examiner into the somewhat more clumsy hands of The Board of Patent Appeals and Interferences. Never a body much accustomed to following what the law says rather than what their reviewer court would have them say, they summarily affirmed the examiner’s decision, but on more limited grounds.
After the decision did reach, by way of the messenger, the ears of the master applying for the grant of letters patent, the master was unpleased. This abstract idea was too valuable to let go. It was certainly worth the money to appeal to yet another authority.
Thus it was that the master, by way of his messenger, did appeal the ruling of The Board.
It was then that a great man’s man by the name of Jon Dudas in charge of the organization of overseeing the issuing of patents at the time did interject and state that he would personally back the proclamation of the examiner before the reviewer court of The Board, known as The Court of Appeals for the Federal Circuit. The organization did issue, as a collective, and through many messengers messages of support of the examiner’s proclamation.
The Court did review the case, an in finding that their long work was being undone by a mere examiner’s proclamation were then thrown into considerable confusion and disarray. All that is, save one judge by the name of Randall Rader. Having thus worked themselves into considerable confusion on the issue they did dig deep at that time in the history books for wisdom which would redeem them in their actions. Finding only clues and hints as to how their reviewing court viewed the matter they did thus rule by making the clues and hints into a hard and fast rule subject to their further machinations at later times. The judges whom created the decision did add in specific parts that were an attempt to justify some of their previous machinations against the interests of the people, whilst admitting some limited fault. Some judges dissented, including Rader, who knew clearly the wisdom of the ancient years and was prepared to rule simply that the master’s claims to property were indeed a claim to an abstract idea and thus could not be permitted as wise men had long ago issued that such should be the case.
When word of this outrage reached, again by the hand of the faithful messenger, the master’s ears, he had by that point been filled with greed considering the money he stood to gain by extortion of the people and other companies through the power of the crown. He did therefore make up his mind to appeal to the highest authority in the land to have his claims justified as being lawful extortion rather than unlawful.
Whence forth the appeal to the highest court did appear by the hand of the messenger, there was by this time considerable murmurings amongst the people.
End Book 1.
“I’m not surprised you don’t want to look at In re Bilski”
Nothing could be further from the truth, I’ll look at Bilski wilski, I thought you were referring to the other. Then I looked it up anyway against my better judgement.
Ok, footnote in Bilski, no. 17.
link to eff.org
Do you see how easy that is to provide a link?
It took me like 5 seconds.
“as it is no longer available free online”
O rly? Gee, that wuz hard.
O wait, what’s this?
link to scholar.google.com
Hmmm, more free Bilski.
The days of your legal knowledge hoarding are fast approaching their end, knave.
” I had to get the law library at my firm to pull a searchable PDF of it for me and I have it saved on my computer now.”
Or you could just google scholar it in like 5 seconds…
In any event, I digress. Bilskiwilski. Footnote 17.
Therefore, in Abele, Meyer, Grams, Arrhythmia Research Technology, Inc. v. Corazonix Corp., 958 F.2d 1053 (Fed. Cir. 1992), and other decisions, those portions relying solely on the Freeman-Walter-Abele test should no longer be relied on.
Hmmm, that seems to support me. As opposed to supporting you.
“The CAFC says that measuring data that represents something in the real world, ala Arrhythmia, avoids preemption and passes MOT’s “particular” transformation prong. They also said displaying data in a particular way is sufficient, which supports that the Alappat claim passes it too. That’s important, because the data in Alappat does not represent anything in particular. The claim is basically converting raw data to a curve and displaying it.”
I must have missed that part.
Also, having re-read the part about Alappat, you’d best be reconsidering it I doest believe. Knave.
And take for instance here:
“So long as the claimed process is limited to a practical application of a fundamental principle to transform specific data, and the claim is limited to a visual depiction that represents specific physical objects or substances, there is no danger that the scope of the claim would wholly pre-empt all uses of the principle.”
That is just more misguided nonsense almost on the order of “useful, concrete and tangible”. First off, they’re basing this blanket statement wholly on MoT being the sole test, but lets toss that aside for a minute to see why it is truly absurd. If the “principle” as they call the abstract idea, has only one use and it is claimed then the principle is wholly preempt. Indeed, that was PRECISELY what happened in Benson. The only use for the “principle” was in the shifter registers etc. in the claim. Those could, in turn be used in trains, airplanes, cars etc. But every use was preempt by that one claim.
Surely, the court would realize this if presented with such a statement, they are not blind. They simply assume in their rational for making the blanket statement that there are other uses for the algorithm other than the ones preempt by the claim. That was a bad assumption to make, and a bad blanket statement to make based thereupon.
And AI, you jackwad, your rtarded attempt to come up with some sort of “DCAT”, which is, by your definition, nothing more than the FWA test was (see In Re Bilski above on page 19 at the top) is kiddylolsically ez to stomp on. FWA, or “DCAT” as you like to know it as, was firmly stomped out in In Re Bilski before even Bilski v Kappos came out. Sorry, bucko.
Oh, and you could stop being such an arse and be thankful for the help I’ve provided you.
6 wrote: “Well, after like a year of my teaching him AI is making progress. You’re not quite there yet AI, but you’re doing better. If you bothered to completely read my posts before you answer you’d glean a lot more from them”
_____
Yeah right. The ONLY thing I am reading and learning from is the SCOTUS. I have posted and used their exact words. The Supremes had every opportunity to change those words, reinterpret the words, or put a Gloss on the precedent on which their words are based.
They chose to do none of the above and reaffirmed Diehr exactly like I said they would on this blog last year.
Posted by: Ned Heller | Jul 26, 2010 at 05:48 PM: ping, Ima – Ho Law? Good one there ping.”
Maybe that is why 6 can’t get into Law School. Perhaps he should take the Ima – Ho LSAT?
The CAFC says that measuring data that represents something in the real world, ala Arrhythmia, avoids preemption and passes MOT’s “particular” transformation prong.
That is plainly wrong, as the CAFC’s focus on the 101-failing measurement known as “mere inspection” proves.
They also said displaying data in a particular way is sufficient,
This is circular and unhelpful. Direct quotes would be nice, TINLA. Except of course that they never defined what a “particular transformation” is, did they?
“If you see or believe a claim contains an abstract idea check to see if the abstract idea is implemented, or applied in a structure or process.”
Posted by: 6 | Jul 26, 2010 at 04:33 PM: “You have misconstrued the decision, however I do not have time to correct you.”
No one has time to read your 5000 word manifesto interpretations of Diehr. Which were nothing more than retreaded Steven dissent from Diehr 1980 anyway.
You can pretend that you are a Supreme Court justice all you want but now that Steven’s has lost and been put away, you have nothing to based your rants on.
GAME OVER
ping, Ima – Ho Law? Good one there ping.
TINLA, thanks for you support on citing chapter and verse on this topic. It has been very helpful.
@ Malcolm: The CAFC, in In re Bilski, went to great lengths to define “particular” transformation in terms of whether or not preemption is avoided, giving several examples and discussing at length that preemption is avoided, and a particular transformation exists, if the data being transformed represents something physical in the real world. I refer you to In re Bilski.
@ 6: The footnote 17 I was referring to is in In re Bilski, not Arrhythmia. I’m not surprised you don’t want to look at In re Bilski, as it is no longer available free online. I had to get the law library at my firm to pull a searchable PDF of it for me and I have it saved on my computer now. I guess you’ll just have to take my word for it. The CAFC says that measuring data that represents something in the real world, ala Arrhythmia, avoids preemption and passes MOT’s “particular” transformation prong. They also said displaying data in a particular way is sufficient, which supports that the Alappat claim passes it too. That’s important, because the data in Alappat does not represent anything in particular. The claim is basically converting raw data to a curve and displaying it.
MOT has a preemption test built in. If there is preemption, there is no “particular” machine or “particular” transformation.
Well, after like a year of my teaching him AI is making progress. You’re not quite there yet AI, but you’re doing better. If you bothered to completely read my posts before you answer you’d glean a lot more from them.
I see pingerdoodle doesn’t like the law so he prefers to call it “IMHO” law when it is explained to him. Go and read the cases tard. If you think there is something different than what they explicitly held, then please, present it. To date, your position appears to be nothing but nonsensical “the office can’t use MOT” blah blah “as long as the claim isn’t directed to an “abstract idea”, a term which cannot be defined, then it’s fine”. None of which finds substantial support in the caselaw, much less actual law, and none of which would be persuasive in court.
” If there is preemption, it’s not a particular transformation, every time. ”
You say that, but it isn’t necessarily true.
Malcolm, I said particular transformation.
Indeed you did. I apologize for missing that. More importantly, I had forgotten somehow that the term “particular transformation” had legal significance. Did the CAFC or Supremes define the term?
Posted by: TINLA IANYL | Jul 26, 2010 at 05:14 PM: “Malcolm, I said particular transformation. If there is preemption, it’s not a particular transformation, every time. Now please do what I asked originally and go find an example in the caselaw, instead of whipping it out of your hind end. ”
Ahhh….but it appears thats all he can do.
AI: “So post hundreds of rants on this blog if thats what you need to do to cope. But all your rationalization wont change the fact that the majority on the Supreme Court has spoken, TWICE NOW!
1 Claims MUST be taken as a whole.
2 Business Methods ARE the law of the law.
Inventors Win!
YOU LOSE!
”
Posted by: 6 | Jul 26, 2010 at 04:35 PM: “What is funny is how easily I can say the same of you. ”
Yes you can say anything you want but it wont change the fact Inventors have the Supreme Court Majority (the winners) and you have the minority ( the losers).
And thats the way it is.
DEAL WITH IT!
Posted by: 6 | Jul 26, 2010 at 04:35 PM: Lol, gl pardner. When the courts start tearing your claims up, don’t come crying to me.
AI: What court(s) would that be? The Lol court? I will stick with the SCOTUS.
As JAOI would say, “Nothing bleepin trumps the Sumpreme Court!”
“You can certainly have transformation AND pre-emption if the transformation in the claim is not sufficiently linked to the purpose of the invention. I’ve given the example scores of times for the likes of AI and the other patent teabaggers, but basically you can always recite a step of, e.g., using energy, converting fuel, consuming oxygen, or some crrp, which would satisfy a “transformation” in the method. This won’t rescue a crrp claim from failing 101 — at least not if the analysis is done correctly.”
Malcolm, I said particular transformation. If there is preemption, it’s not a particular transformation, every time. Now please do what I asked originally and go find an example in the caselaw, instead of whipping it out of your hind end.
When the courts start tearing your claims up, don’t come crying to me.
Assumes far too much.
6, does the claim preempt:
In the Flook and Diehr sense, it does not. The claim’s preamble specifically requires it to operate on physical signals — from an electrocardiogram. If you ignore the preamble, or treat it as a mere “field of use,” then I would agree with you that it does.
Posted by: Ned Heller | Jul 26, 2010 at 03:44 PM
______
Okay let’s once and for all clear up how to handle this field of use limitation that 6 is clinging to by a thread so he won’t have to fall face down in the law established by the SCOTUS in Diehr, and reaffirmed by the SCOTUS in Bilski.
Diamond v. Diehr, 450 US 175 – Supreme Court 1981: “Parker v. Flook, supra, presented a similar situation. The claims were drawn to a method for computing an “alarm limit.” An “alarm limit” is simply a number and the Court concluded that the application sought to protect a formula for computing this number. Using this formula, the updated alarm limit could be calculated if several other variables were known. The application, however, did not purport to explain how these other variables were to be determined,[10] nor did it purport “to contain any disclosure relating to the chemical processes at work, the monitoring of process variables, or the means of setting off an alarm or adjusting an alarm system. All that it provides is a formula for computing an updated alarm limit.” 437 U. S., at 586.
[ So its obvious that according to the Diehr majority, no field of use limitation was going to save Flook. Because his “application” did not disclose anything more. In other words Flook failed the DCAT, Diehr Concept and Application Test.]
Diamond v. Diehr, 450 US 175 – Supreme Court 1981: “In contrast, the respondents here do not seek to patent a mathematical formula. Instead, they seek patent protection for a process of curing synthetic rubber. Their process admittedly employs a well-known mathematical equation, but they do not seek to pre-empt the use of that equation. Rather, they seek only to foreclose from others the use of that equation in conjunction with all of the other steps in their claimed process.”
[ So once again its obvious that according to the SCOTUS Diehr majority, Diehrs invention was no mere field of use limitation because his “application” disclosed all of the other steps in their claimed process. In other words Diehr passed the DCAT, Diehr Concept and Application Test.]
So what do you learn from this about pre, post extra solution activity or field of use limitations analysis?
1. You go the application and read it!
2. Find out what the definition of the concept is either as it is defined and/or described by the Inventor.
3. Read the specification and see how the detailed the steps are.
Then and only then can anyone determine if there is a mere field of use limitation or just pre, post solution activity.
Diehr passed this analysis, Flook and Bilski failed it. And that’s part of the reason why Diehr has his patent and they do not.
AND THATS THE WAY ITS DONE.
First we have IMHO-Ned law.
Now we have Ima-Ho-6 law:
“The abstract idea test, as I have explained to you… is the law. ”
“Now on a personal note. That long dissent by Stevens in Bilski means nothing.
He lost in 1980.
He lost again in 2010.
All your problems all arise from the sad fact you have emotionally invested yourself for years in a losing legal ideology.
So post hundreds of rants on this blog if thats what you need to do to cope. But all your rationalization wont change the fact that the majority on the Supreme Court has spoken, TWICE NOW!
Claims MUST be taken as a whole.
Business Methods ARE the law of the law.
Inventors Win!
YOU LOSE!
”
What is funny is how easily I can say the same of you. Lol, gl pardner. When the courts start tearing your claims up, don’t come crying to me.
So Ned, in effect, you feel like the abstract idea I put forth might have some other use than it being applied to electrocardiogram signals? What, prey tell would that be?
Let’s go out on a limb and assume we keep the preamble, and don’t treat it as mere field of use. (though those are both probably killer propositions, good that your recognized those, you might be coming along after all)
What other uses would there be for that abstract idea I put forth? I can’t think of any. I would thus conclude, absent your presentation of any, that the claim substantially (at least) wholly preempts the use of the abstract idea I put forth. And that, iirc, was practically what Benson said is enough to kill it. That is, while they did not use that language, they attempted to come up with alternative uses but found all of them that they could come up with to be preempt. In this case I can only come up with one use, and it is preempt.
“What’s the point of you and the likes of MM, typing up abstract thoughts on a blog and challenging people to prove they are not abstract thoughts?”
I never challenged anyone to do any such thing. You’re too re tarded to understand what I did “challenge them to “prove””. What I asked them, was whether or not the claim at issue preempt the abstract idea I put forth. You can try to answer the question yourself if you like. Ned already led the way for you.
“If you see or believe a claim contains an abstract idea check to see if the abstract idea is implemented, or applied in a structure or process.”
You have misconstrued the decision, however I do not have time to correct you. You can however obtain the primer I wrote the other day for Ned from Ned perhaps.
Ned: But, I differ with the Feds that this claim passes the MOT as it does not transform anything physical from one state to another.
Still, it is not abstract.
Well, I also differ with them on whether it’s abstract. Since all it does is receive data, do a calculation, and output the result of the calculation. Sure, the spec might save someone’s life at some point, and the judges were clearly very impressed by that, but the all-important non-abstract aspect of doing something with the result of the calculation is nowhere to be found in the claims.
All Arrhythmia really claims is an alarm limit.
6 wrote: “I’m the kind of person that thinks up these kinds of abstract ideas, I know one, and I know how I’d try to patent it. I’m thus well suited to root them out and destroy them.”
_________________
What’s the point of you and the likes of MM, typing up abstract thoughts on a blog and challenging people to prove they are not abstract thoughts?
Your abstract thoughts are not inventions, and thus they can never be patented. And you will obviously never be inventors. If you were “Actual Inventors” you would know you can’t use an abstract idea to operate anything, so such thoughts could never be patentable process inventions
Now if you are trying to understand when something is legally an abstract idea simply follow the law in Diehr, that was upheld and reaffirmed in Bilski by the SCOTUS.
Diamond v. Diehr, 450 US 175 – Supreme Court 1981:
“when a claim containing a mathematical formula implements or applies that formula in a structure or process which, when considered as a whole, is performing a function which the patent laws were designed to protect (e. g., transforming or reducing an article to a different state or thing), then the claim satisfies the requirements of § 101.
[ MY NOTE: The court in Diehr believed that mathematical formulas were abstract ideas so their instruction for mathematical formulas can be extrapolated to all abstract ideas.]
Because we do not view respondents’ claims as an attempt to patent a mathematical formula, but rather to be drawn to an industrial process for the molding of rubber products, we affirm the judgment of the Court of Customs and Patent Appeals.[15]”
So 6 and MM, here is what you need to know according to the SCOTUS:
1. If you see or believe a claim contains an abstract idea check to see if the abstract idea is implemented, or applied in a structure or process. (This is what I simply referred to as the DCAT, Diehr Concept and Application Test.)
2. You complete step one by considering the claims as a whole. If when considered as whole the claims do not attempt to patent the abstract idea itself then the claims are statutory subject matter.
And thats the way its done!
Yes, it’s that simple.
If the Supremes wanted to change that they could have in Bilski but they did not.
CASE CLOSED!
____________
Now on a personal note. That long dissent by Stevens in Bilski means nothing.
He lost in 1980.
He lost again in 2010.
All your problems all arise from the sad fact you have emotionally invested yourself for years in a losing legal ideology.
So post hundreds of rants on this blog if thats what you need to do to cope. But all your rationalization wont change the fact that the majority on the Supreme Court has spoken, TWICE NOW!
Claims MUST be taken as a whole.
Business Methods ARE the law of the law.
Inventors Win!
YOU LOSE!
6, does the claim preempt:
In the Flook and Diehr sense, it does not. The claim’s preamble specifically requires it to operate on physical signals — from an electrocardiogram. If you ignore the preamble, or treat it as a mere “field of use,” then I would agree with you that it does.
If you want to put your re tard hat on rather than answer the question Ned I’m going to not discuss these matters with you further.
I will give you another chance to answer the question as presented.
The question, should it need to be made more clear to you, is effectively:
Does this claim preempt the abstract idea I have put forth?
It is a yes or no question. Whether or not the claim itself is abstract is irrelevant. Although if it is, then the answer to the question would likely be easy.
There is of course, along with that above question room to argue that the abstract idea I put forth (rather than the claim itself) is indeed not an abstract idea at all if you should so desire to argue thus.
6,
“Let me ask you Ned. Does that pass the abstract idea test?
Go ahead, see what you can do. Yes or No. Make up your mind.
Now, what do you think when I say:
This claim preempts the abstract idea that the presence or absence of a predetermined level of high frequency energy in a late QRS signal may be determined by converting a series of QRS signals to time segments,…”
6, what again is the abstract idea test?
I personally think the Arrhythmia claim could only survive Flook if the measurement of a physical signal was required by the claim. The physicality of the measurement and the central purpose of the rest of the claim to transform the digital representation of that signal into something useful is what is not abstract about the claim.
But, I differ with the Feds that this claim passes the MOT as it does not transform anything physical from one state to another.
Still, it is not abstract.
TINLA Go look at the case law and find me one instance where the CAFC or SCOTUS found that there was a particular machine or transformation, but that there was still preemption.
You can certainly have transformation AND pre-emption if the transformation in the claim is not sufficiently linked to the purpose of the invention. I’ve given the example scores of times for the likes of AI and the other patent teabaggers, but basically you can always recite a step of, e.g., using energy, converting fuel, consuming oxygen, or some crrp, which would satisfy a “transformation” in the method. This won’t rescue a crrp claim from failing 101 — at least not if the analysis is done correctly.
“What “paragraph” 17 are you talking about? In Arrhythmia?”
Yes, I cited the Arrhythmia decision. Maybe it is a footnote, but it looked to me like she was just designating her paragraphs by numbers and that was the only relevant “17” I could find.
“The Freeman-Walter-Abele (FWA) test was around for a long time, almost 20 years.”
What do you want me to say? That you people in the patent bar fail at life? Come on guys. Get with the program.
“The CAFC replaced it with the “Concrete Tangible Result” (CTR) test of Alappat and State Street because, they reasoned, it violated Diehr’s prohibition against dissectiong claims.”
So you want me to state that the CAFC fails at life? Or just more particularly, fails at law? If you want me to I can tell you that. It’s not a problem. Trust me, they do. On the other hand though, they’re pretty good at it as well. They just get bamboozled sometimes is all. It happens to everyone.
“In fact, they went to a great deal of trouble to expressly clarify that those allowed claims would come out the same under MoT”
You rely too much on MOT sir. MOT is a clue. The abstract idea test, as I have explained to you, will trump you every single time when performed properly, because, guess what, it is the law.
And, guess what? The CAFC, if properly informed, will not fail to hold properly in direct violation of what has been made clear is the law.
“I don’t know where you keep getting these ideas that the CAFC will not prevail in continuing to find such claims as in Arrhythmia to be not abstract”
I keep “getting these ideas” because they blatantly preempt the abstract ideas I lay out against the blatant exceptions made in the caselaw. I note, that I bothered to take the time to do a proper analysis on the claims, and it wasn’t a peachy time. Although, to one of ordinary skill in the signal processing arts, or thereabouts, the Arrhythmia claim was cake to see for what it was. An attempt to patent the abstract idea I laid out.
I’m the kind of person that thinks up these kinds of abstract ideas, I know one, and I know how I’d try to patent it. I’m thus well suited to root them out and destroy them.
“Then Bilki v Kappos established that patentable subject matter is even broader than MoT, even if not by much. ”
You misunderstand what the justices wished to say. It is broader in some respects, narrower in others. Go and read the decision again, this time keeping in mind that what they are referring to as being the “test” as to the claim being statutory is SOLELY whether or not a judicial exception has been preempt. They noted that MOT does not adequately align with this “test” to be a perfect test. They do not say that patentable subject matter is necessarily “more broad” in all respects as compared to what passes MOT, or “less broad” in all respects compared to MOT. They held precisely that the only thing they care about is their precious judicial exceptions, everything else be dam, with the exception to that being post solution activity and field of use limitations.
Seriously broje, there is no other way to honestly read Bilski. It is a straightforward return to BFD, everything else be dam.
If you require my consulting services, on hypothetical claims mind you, you know my email.
“Transformation/particular machine don’t mean jack if you be preemptin on the abstract ideas.”
The CAFC, time and again, determines whether something is directed to a particualr machine or particular transformation in order to determine whether or not there is preemption. It is the test for preemption. If you have preemption, then it is not a particular machine or transformation.
Go look at the case law and find me one instance where the CAFC or SCOTUS found that there was a particular machine or transformation, but that there was still preemption.
Go look at the case law and find me one instance where the CAFC or SCOTUS found that there was preemption, but yet there was a particular machine or particular transformation.
The analyses are joined at the hip, and expressly so throughout the caselaw, especially at the CAFC.
What “paragraph” 17 are you talking about? In Arrhythmia? In Abele, In In re Bilski?
The court did find patentbale a dependent claim in Abele, while the independent claim in Abele was unpatentable. What does that have to do with Arrhythmia?
The Freeman-Walter-Abele (FWA) test was around for a long time, almost 20 years. The CAFC replaced it with the “Concrete Tangible Result” (CTR) test of Alappat and State Street because, they reasoned, it violated Diehr’s prohibition against dissectiong claims.
CTR was viewed, perhaps wrongly so, as broader than FWA. Then, The CAFC appeared to narrow the test somewhat by going to MoT. But that too is a false view, as explained below.
As discussed by the CAFC in In re Bilski, MoT still embraced claims like the allowed dependent claim of Abele and the independent claim of Arrhythmia as patent eligible. What was less clear was whether the claims in Alappat and State Street would pass MoT, but the CAFC expressly stated that the result in State Street was not overruled, and they were merely replacing the CTR test with one that should be more clear and help the BPAI and lower Courts reach the proper decisions. Nowhere did the CAFC indicate that the results in any of its cases under FWA or CTR would have come out differently under MoT. In fact, they went to a great deal of trouble to expressly clarify that those allowed claims would come out the same under MoT. That they failed to clearly state that the claim in Alappat would also pass MoT is troubling, but I think they had no intention of promulgating a test that would conflict with their previous rulings. They only wanted to issue a new test that would be more clear.
Then Bilki v Kappos established that patentable subject matter is even broader than MoT, even if not by much.
I don’t know where you keep getting these ideas that the CAFC will not prevail in continuing to find such claims as in Arrhythmia to be not abstract. They are simply going by the guidance in Diehr regarding what was wrong with the Flook claim, and why it failed the 101 analysis, and als that the claim must be considered as a whole, and cannot be dissected into old and novel elements.
“Parker v. Flook, supra, presented a similar situation. The claims were drawn to a method for computing an “alarm limit.” An “alarm limit” is simply a number and the Court concluded that the application sought to protect a formula for computing this number. Using this formula, the updated alarm limit could be calculated if several other variables were known. The application, however, did not purport to explain how these other variables were to be determined, 10 nor [450 U.S. 175, 187] did it purport “to contain any disclosure relating to the chemical processes at work, the monitoring of process variables, or the means of setting off an alarm or adjusting an alarm system. All that it provides is a formula for computing an updated alarm limit.” 437 U.S., at 586 .”
“Respondents’ claims must be considered as a whole, it being inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. The questions of whether a particular invention meets the “novelty” requirements of 35 U.S.C. 102 or the “nonobviousness” requirements of 103 do not affect the determination of whether the invention falls into a category of subject matter that is eligible for patent protection under 101. Pp. 185-191. ”
6: Transformation/particular machine don’t mean jack if you be preemptin on the abstract ideas.
Thing is, it’s pretty hard to say you’re pre-empting an abstract idea if your claim is limited to a particular machine or to the physical (as opposed to mathematical, not as opposed to chemical) transformation of a particular physical substance. That’s probably a big part of why the Circuit wanted the machine to be “particular” and not give general-purpose computers a free pass.
I don’t think there will ever be a claim that passes MOT and is invalid for preempting an abstract idea. Ever.
Ping, I take it you didn’t read my primer because it was tldr.
This is not the case:
“The key is the magic of only using abstract ideas in the absract idea test in order to get the result of an abstract idea.”
One is not trying to reach a “result” of an abstract idea in the abstract idea “test”. See the “test” as simply trying to find facts Ping. Is there, as a factual question, an abstract idea that is preempt by the claim? The “result” or “answer” is a yes or a no, not the abstract idea itself. You can then say, as a matter of law, that you reach the “result” that the claim is “directed to an abstract idea” in a manner of speech, but that is simply in a manner of speech. You can further reach the “result” as a matter of law, that the claim is invalid.
As a finding of fact, when you’re presented with the already recited abstract idea I put forth above, can you bring yourself to argue that it isn’t an abstract idea? Because if you can, then go ahead and state why. Can you argue that the abstract idea I put forth is not preempt by the claim? If you fail in either argument the claim is dead. There is simply nothing more to the test. Find an abstract idea. This is a factual finding mind you. Then evaluate whether the abstract idea is preempt by the claim. Again, a factual consideration. Now, find your “result” that the claim is invalid as a matter of law, as being directed to an abstract idea.
And note that this argument against the claim preempting any abstract ideas is easily made for claims like the ones I recited for you guys regarding the computer with a battery pack.
I LOL myself – busting a tag
“The only rule of the test is that you cannot put a non-abstract idea behind those magic words. If you do, the rejection or argument in court would fail. You will note however that when I use my “magic phrase” I use it properly, only preceding abstract ideas”
How fast in a circle can 6 spin his logic? The key is the magic of only using abstract ideas in the absract idea test in order to get the result of an abstract idea.
That’s even worse than using process in a definition for process (where at least one of the terms of process has a historical meaning, and the other as witnessed by the highest court of the land has the everyday ordinary meaning.
“Now take your item and put your pet phrase of “An abstract idea of” in front of it and your claim is an abstract idea.
I think that’s what Charley is saying.
”
What Charley is saying is nonsense gibberish. The only rule of the test is that you cannot put a non-abstract idea behind those magic words. If you do, the rejection or argument in court would fail. You will note however that when I use my “magic phrase” I use it properly, only preceding abstract ideas. You cannot do this with the claim I recited for you.
O look, another gem in the wiki.
Death
The test appears dead with In re Bilski. It was noted that some patentable subject matter can fail the test.[7] The CFAC called the test inadequate. It voided the effect of the portions of decisions relying solely on the test. These include In re Abele, Meyer, In re Grams, and Arrhythmia Research Technology v. Corazonix Corp. However, some portions of those decisions survived Bilski, such as the portion of In re Abele concerning data representations of physical objects or substances.
“See footnote 17 and related discussion.”
Of a decision which I’ve hitherto declined to look up. I don’t plan to reconsider on this decision to not look the case up.
“I am presuming, for the moment, that anything that passes the MoT test automatically passes the Abstract Idea test”
You shouldn’t.
There is no arguing with it. It preempts that abstract idea in total. It fails Benson outright, with a mere hint of Flook put in for flavoring.
link to cases.justia.com
In “paragraph” 17 of that decision you can see they are talking about a dep claim. Not the ind.
Diehr, contrary to popular belief, didn’t change sht about Benson or Flook. The CAFC getting this wrong is merely another chance for the USSC to smack them down, and it is a pity that didn’t happen in 1992. Would that they have appealed back then, or argued properly. Either way, with the more recent
“The CAFC basically set forth the claim in Arrhythmia as an example of a claim that evidences a particular transformation, and SCOTUS has repeatedly declined to grant Cert in any of the cases in which the CAFC set up the paradigm whereby the transformation of data that represents something in the real world avoids preemption.”
They are rather busy I hear. They don’t grant cert on just anything. This was an open and closed case had it have been argued well.
Transformation/particular machine don’t mean jack if you be preemptin on the abstract ideas. Don’t ever forget it. I’m telling you now so you don’t get jumped in the court room by someone like me later.
“The Patent and Trademark Office had granted the patent without questioning that its claims were directed to statutory subject matter under § 101. ”
Problem no. 1 in this case.
Dig a little deeper in the case Broje. The real reason the court decided the way they did was that they focused on whether or not use of the mathematical formula was preempt. That is, the case was poorly argued. The defense should have focused on which actual abstract idea was being preempt, not the mathematical formula. I just presented such for you. There is no denying it is an abstract idea. There is no denying that the law prohibits patenting thereof. That’s really all there is to it. None of the other nonsense anyone might try to bring into the discussion is irrelevant what so ever. You might not like it, but your precious CAFC made a boo boo. Likely because the lawlyers presenting the case made a boo boo.
“32
Thus computers came to be generally recognized as devices capable of performing or implementing process steps, or serving as components of an apparatus, without negating patentability of the process or the apparatus. In Diamond v. Diehr the Court explained that non-statutory status under section 101 derives from the “abstract”, rather than the “sweeping”, nature of a claim that contains a mathematical algorithm. The Court stated:
”
LOL, who wrote that, judge Newman? O LOL, YES IT WAS LOLOLOLOL. Newman, you kidder you. They only became “generally recognized” as such by those of limited (retarded) skill in the art, and the courts. Now that those of us of skill in the art are here to set the courts straight as to what computers actually are, then, we can get down to business. If you need an expert affidavit I can give you one.
“This analysis has been designated the Freeman-Walter- Abele test for statutory subject matter.”
O, that old thing? When did they do away with that? No wonder this case is so askew.
“Its use faded between 1992 and 1999 with In re Bilski was dead by 2008.”
Wikipedia reports that it only took a little while to weed out this cancer. Thankfully, Bilski has righted the ship entirely on that point.
The abstract idea analysis is not limited to the mathematical formula under discussion as FWA would have you believe. It is, as I’ve told you from the beginning, only limited to abstract ideas.
6, not only does the Arrhythmia claim you quoted above pass the Abstract Idea test, it passes the MoT test. The CAFC already said as much in In re Bilski. See footnote 17 and related discussion.
I am presuming, for the moment, that anything that passes the MoT test automatically passes the Abstract Idea test. I think that the way the MoT test is written and applied by the CAFC already takes preemption into account in the analysis regarding whether the machine or transformation is “particular.” The CAFC basically set forth the claim in Arrhythmia as an example of a claim that evidences a particular transformation, and SCOTUS has repeatedly declined to grant Cert in any of the cases in which the CAFC set up the paradigm whereby the transformation of data that represents something in the real world avoids preemption. If you think the SCOTUS opinion in Bilski v Kappos addressed or cast in a negative light the CAFC’s interpretation of such claims as passing MoT and therefore not Abstract, I think you are mistaken. If I recall correctly, the SCOTUS majority in Bilski v Kappos specifically said that we should turn to the CAFC’s opinion in In re Bilski for guidance.
You know that old adage about a broken clock being right twice a day? It doesn’t apply to records.
What is a facially abstract invention?
Didn’t the IPO Daily just get done talking about using that word (facialy)?
All you need to know from Bilski:
The Court first considers two proposed categorical limitations on “process” patents under §101 that would, if adopted, bar petitioners’ application in the present case: the machine-or-transformation test and the categorical exclusion of business method patents.
Bilski at 5 – NOTE: Both of these categorical limitations are expressly defeated.
This Court has “more than once cautioned that courts ‘should not read into the patent laws limitations and conditions which the legislature has not expressed.’”
Id. 6
This Court has not indicated that the existence of these well-established exceptions gives the Judiciary carte blanche to impose other limitations that are inconsistent with the text and the statute’s purpose and design.
Id
Adopting the machine-or-transformation test as the sole test for what constitutes a “process” (as opposed to just an important and useful clue) violates these statutory interpretation principles.
Id.
in all events, later authority shows that it was not intended to be an exhaustive or exclusive test.
Id. 7
This Court’s precedents establish that the machine-or transformation test is a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under §101. The machine-or transformation test is not the sole test for deciding whether an invention is a patent-eligible “process.”
Id. 8 NOTE: sinc enot conclusive, MoT is a one way test – it can show eligibility. It cannot show ineligibility.
The Court is unaware of any argument that the “‘ordinary, contemporary, common meaning,’” Diehr, supra, at 182, of “method” excludes business methods.
Id. 10 NOTE: the supremecy of Diehr
The argument that business methods are categorically outside of §101’s scope is further undermined by the fact that federal law explicitly contemplates the existence of at least some business method patents.
Id
Section 273’s definition of “method,” to be sure, cannot change the meaning of a prior-enacted statute. But what §273 does is clarify the understanding that a business method is simply one kind of “method”
Id. 11
A conclusion that business methods are not patentable in any circumstances would render §273 meaningless. This would violate the canon against interpreting any statutory provision in a manner that would render another provision superfluous. See Corley v. United States, 556 U. S. ___, ___ (2009) (slip op., at 9). This principle, of course, applies to interpreting any two provisions in the U. S. Code, even when Congress enacted the provisions at different times. See, e.g., Hague v. Committee for Industrial Organization, 307 U. S. 496, 529–530 (1939) (opinion of Stone, J.). This established rule of statutory interpretation cannot be overcome by judicial speculation as to the subjective intent of various legislators in enacting the subsequent provision.
Id. NOTE: thus defeating the dissent of Stevens
Finally, in Diehr, the Court established a limitation on the principles articulated in Benson and Flook.
Bilski 14
Bilski 14
Believe It!
” If the MOT is used and the applicant does not pass MOT he can point out that his/her invention passes the DCAT. ”
pointing out that the invention passes another test IS overcoming the MoT test.
Bilski DID NOT say that MoT cant be used. Under admin law, the PTO can use whatever lawful guidelines they want. Application of the MoT for facially abstract inventions is not using the MoT as an “exclusive” test.
You all sound like a bunch of children.
6,
Now take your item and put your pet phrase of “An abstract idea of” in front of it and your claim is an abstract idea.
I think that’s what Charley is saying.
“Take any item that ever has been patented, any item at all, and apply the test constructed by 6, and show that the patent should not have been granted because the idea of that item is an abstraction that preempts that very idea.”
I’ve already addressed your nonsensical position in other threads.
“1. A portable computer supportable on a support surface, comprising:
a portable computer body having upper and lower main surfaces joined by corresponding front and rear edges;
a battery detachably connectable at an upper surface thereof to the lower main surface of the portable computer body adjacent the rear edge thereof and maintaining the rear edge elevated with respect to the front edge, relatively to a support surface on which the portable computer body, with the battery detachably connected thereto, is supported; and
said upper surface of the battery being in contact with said lower main surface of the portable computer body within a region thereof adjacent the rear edge, when said battery is connected to the portable computer body.”
Go ahead, take that item that has been patented and apply my test. I already have. You will quickly find that it passes with flying colors. Not only that, but as luck would have it, it is to a particularized general purpose computer.
Go ahead and try my question way above Ned.
A counter challenge that I believe that 6 will jump all over:
Take any item that ever has been patented, any item at all, and apply the test constructed by 6, and show that the patent should not have been granted because the idea of that item is an abstraction that preempts that very idea.
You will find that such a test rules out everything that has ever been patented.
Now you can draw your own conclusion about such a test, which not only beats my own position on what is left to be patented, but goes further and shows that no patent should ever have been granted.
If you think that this is an absurd result, you only have to follow the absurdity back to the logic of the test. Well, you can take the originator of the test idea in mind too.
“” A method for analyzing electrocardiograph signals to determine the presence or absence of a predetermined level of high frequency energy in the late QRS signal, comprising the steps of:
converting a series of QRS signals to time segments, each segment having a digital value equivalent to the analog value of said signals at said time;
applying a portion of said time segments in reverse time order to high pass filter means;
determining an arithmetic value of the amplitude of the output of said filter; and
comparing said value with said predetermined level.””
Let me ask you Ned. Does that pass the abstract idea test?
Go ahead, see what you can do. Yes or No. Make up your mind.
Now, what do you think when I say:
This claim preempts the abstract idea that the presence or absence of a predetermined level of high frequency energy in a late QRS signal may be determined by converting a series of QRS signals to time segments, each segment having a digital value equivalent to the analog value of said signals at said time, applying a portion of said time segments in reverse time order to high pass filter means, determining an arithmetic value of the amplitude of the output of said filter, and comparing said value with said predetermined level.
What say you? Yes or no? Out with it.
Or how about, more clearly, without the post-solution activity techno-babble that they wrote into the claims:
This claim preempts the abstract idea that the presence or absence of a predetermined level of high frequency energy in a late QRS signal may be determined by converting a series of QRS signals to time segments, each segment having a digital value equivalent to the analog value of said signals at said time, determining a high frequency component of said time segments analysed in reverse time order, determining an arithmetic value of the amplitude of the high frequency component, and comparing said value with said predetermined level.
What say you? Yes or no? Out with it.
Do you see how the high pass filter means here is nothing but post solution activity?
Feel free to refer to the primer I typed you if you need to bust out the construction paper.
Note here, that the real tragedy in this case is that the defense did not adequately argue the case.
The PTO has been using the MoT test since the days of Benson. There is nothing that says they can’t use it. If they choose to use it, then the applicant needs to overcome the application of the MoT.
WRONG – Bilski says they cannot use MoT (by itself) to deny the applicant his legal rights. Furthermore, Benson has been limited by Diehr – Officially by the highest court in the land. Benson must bow to Diehr. The PTO cannot legally use Benson alone to deny an applicant his legal rights to a patent. 9-0 MoT alone is no good – not for what the Office wants, anyway.
MoT can be used – but for what? It is now a one-way test and is not a two way test. The one way it can be used is to show that the matter is patent eligible. That’s it. It is officially not a two way test because it cannot show that something is ineligible. The Supreme Court has held thus. Do people here lack the common sense to understand the difference between a one-way test and a two-way test?
So there is nothing for an applicant to overcome if an examiner uses such a one way test. The Law says an applicant deserves a patent “unless”. One-way tests cannot overcome this starting point.
Bilski 14
Believe it baby!
Posted by: RWA | Jul 24, 2010 at 05:09 AM: “The PTO has been using the MoT test since the days of Benson. There is nothing that says they can’t use it. If they choose to use it, then the applicant needs to overcome the application of the MoT.”
RWA, no one is saying the PTO can’t use the MOT Test. The point is the Supremes said the MOT test is not THE test. You people are ignoring this very significant fact and acting like the PTO got everything it asked for in it’s brief.
Also you are wrong that the applicant needs to overcome the MOT. If the MOT is used and the applicant does not pass MOT he can point out that his/her invention passes the DCAT. For the last 4-5 years that was a not an argument with legs with Bilski in play but now that the Supremes have spoken its rock solid. We have TWO 101 tests now now sanctioned and confirmed by the SCOTUS, MOT and DCAT.
DS: “Based on some examiner-based posts I have seen, I am looking forward to arguing that the MoT is not the end-all analysis that needs to be done nor does it support a prima facie case.”
Thats great, however, be prepared to go to appeal as the examiner will not know how to (properly) respond.
The PTO has been using the MoT test since the days of Benson. There is nothing that says they can’t use it. If they choose to use it, then the applicant needs to overcome the application of the MoT.
Mere exposure to English doesn’t work; you have to blurt out a larger number of usefull sentences.
// I’m looking forward to it. When do I need to begin drafting my amicus brief – sometime around 2016?
Me too. But, supposing you write an application today (2010) and submit it through the office. You’ll probably need to wait a little longer.
Let’s 44 months average pendency (according to PTO statistic) + 12 months ( to get twice rejected by an examiner) + 36 months ( for the BPAI decision).
You’re looking 2017-2018 for the application to get out of the PTO. Add another 3-4 years for the CAFC. You’re looking at what 2021 or 2022?
AI: The PTO’s internal memo has no force of law and if anyone in the Office attempts to assert it as such I fully intend on dealing with it. As will the SCOTUS if needed.
Cy Nical : I’m looking forward to it. When do I need to begin drafting my amicus brief – sometime around 2016?
_____
You won’t need too. Fortunately the Patent Examiners in the business method art unit are far more intelligent and competent than the couple of anti patent posters still on this blog.
AI: The PTO’s internal memo has no force of law and if anyone in the Office attempts to assert it as such I fully intend on dealing with it. As will the SCOTUS if needed.
I’m looking forward to it. When do I need to begin drafting my amicus brief – sometime around 2016?
Posted by: AI’s Dear Diehrist | Jul 23, 2010 at 04:20 PM: So you are admitting that the PTO’s current guidance, being less broad than accepted law, is illegal?
Why didn’t you just come out and say so?
Join us!
Bilski 14
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He reminds me of those Japanese soldiers on deserted islands in the south pacific who refused the believe the war was over. IANAE and all his alter egos just can’t come to terms with the fact he lost.
At least poor 6 is making his way back reality. Even if he has to believe he has the power of a Supreme Court Justice in order to do so.
IANAE: Yes, Diehr is a shining example of how you can get a patent on a claim that passes the Machine or Transformation test.
AI: Oh God….This inane tautology of yours is simply your way of refusing to deal with the facts presented. And regardless of how you choose to admire Diehrs invention it does not change the following three facts.
1. Diehrs invention passes both the DCAT and MOT tests
2. Both tests were recognized by the SCOTUS in TWO landmark cases.
3. No one in the Patent Universe can refute the above two facts with any Supreme Court Case Law.
CASE REMAINS CLOSED.
BANGS GAVEL.
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IANAE: That’s actually broader than the PTO’s current guidance, which is “you can get a patent on a claim that passes the Machine or Transformation test – unless it’s abstract”.
Deal with it.
AI: The PTO’s internal memo has no force of law and if anyone in the Office attempts to assert it as such I fully intend on dealing with it. As will the SCOTUS if needed.
“So you are admitting that the PTO’s current guidance, being less broad than accepted law, is illegal?”
Nope.
But I don’t think the distinction will ever find practical application anyway, so nobody would ever have standing to question it.
“That’s actually broader than the PTO’s current guidance, which is “you can get a patent on a claim that passes the Machine or Transformation test – unless it’s abstract”.”
So you are admitting that the PTO’s current guidance, being less broad than accepted law, is illegal?
Why didn’t you just come out and say so?
Join us!
Bilski 14
Based on some examiner-based posts I have seen, I am looking forward to arguing that the MoT is not the end-all analysis that needs to be done nor does it support a prima facie case.
Fun times ahead!!!
AI: “Diehr’s invention passed both the concept and application test as well as the machine or transformation test. Both test were recognized by the SCOTUS in Diehr and both test were reaffirmed by SCOTUS in Bilski.”
Yes, Diehr is a shining example of how you can get a patent on a claim that passes the Machine or Transformation test.
That’s actually broader than the PTO’s current guidance, which is “you can get a patent on a claim that passes the Machine or Transformation test – unless it’s abstract”.
Deal with it.
AI: “We also have the Diehr test for concept or application, DCAT for short.”
IANAE: Diehr wasn’t given his patent because it didn’t cover the entire concept on which it was based. Diehr was given his patent because he claimed a machine and a transformation.
AI: WRONG! As usual.
Diehr’s invention passed both the concept and application test as well as the machine or transformation test. Both test were recognized by the SCOTUS in Diehr and both test were reaffirmed by SCOTUS in Bilski.
You lose.
Inventors win.
Deal with it.
“IANAE, regardless what they said, the claim does not involve a specific machine and does not involve the transformation of article from one state to another. Even so, it clearly is not abstract.”
Ned, regardless of what they said, the claim is clearly abstract. It’s pure math, and they don’t claim doing anything with the result. It’s no better than taking binary data corresponding to someone’s EKG and converting it to binary-coded decimal.
But what they actually said was that the claim was not-abstract for pretty much the same reason they said the claim passed MOT.
These are not the droids you’re looking for. There is no second test here.
IANAE, regardless what they said, the claim does not involve a specific machine and does not involve the transformation of article from one state to another. Even so, it clearly is not abstract. This case therefore forms the basis for a second test — which I have attempted to generalize and which TINLA has so kindly pointed out is supported in Diehr’s criticism of the claims of Flook.
Posted by: IANAE | Jul 23, 2010 at 10:06 AM: “Great. Sounds simple enough. Give me one example of such a claim that doesn’t involve a machine or a transformation, bearing in mind that “concept” is no better defined than “abstract”.”
Oh, I could give you examples. A couple are framed on my wall. But why should I? The point is this is what the SCOTUS has ruled, and its now the law of the land.
CASE CLOSED!
As for the cause of your faulty logic that you keep repeating no matter how many times you are corrected, that is still a mystery. Nonetheless I will repost the same explanation I gave to you the last time you posted this illogical line of reasoning. Read it and learn. Learn it well.
Posted by: Actual Inventor | Jul 02, 2010 at 09:02 PM
“Its the law that blacks are not forbidden to live in my neighborhood. And for a long time you could not find a single one that had ever lived there. But did that mean the law did not exist, or was not in effect?
Heck no!
Actual Inventors now have as the law of the land, DCAT Diehr Concept or Application, and MOT Machine or Transformation. That allows 99.9% of ALL business methods.
And whether anyone ever applies for a patent using these lawful tests, they still exist and remain the law of the land.
DEAL WITH IT BABY! :-D”
Post: “ the Diehrbots ”
Answer: Bilski 14
Ned: “Now, I do not take this to pass the MOT.”
You may not, and indeed neither do I. But the flimsy rationalization that formed the basis for the Federal Circuit’s decision in that case clearly stated that the claims involved a physical transformation and therefore passed the MOT.
Therefore, whatever else it may be, it is not an example of a claim that fails the MOT but is nevertheless statutory.
Malcolm, what is with you and Tea Party folks? Do you feel threatened in some way by the movement? Or do you simply disagree with their politics?
IANAE, Arrhythmia operated on signal measured from a heart patient. It ended up with a digital signal representing risk of a heart attack. Now, I do not take this to pass the MOT. However, the claim is not abstract as well. It actually requires the measurement of something physical.
Now I can see that a court might call for the claim to include the measurement step to be positively set forth. But regardless, the claim is tied to the physical world. It is not just calculating a mathematical algorithm on data using a GP digital computer.
The claim below for discussion:
” A method for analyzing electrocardiograph signals to determine the presence or absence of a predetermined level of high frequency energy in the late QRS signal, comprising the steps of:
converting a series of QRS signals to time segments, each segment having a digital value equivalent to the analog value of said signals at said time;
applying a portion of said time segments in reverse time order to high pass filter means;
determining an arithmetic value of the amplitude of the output of said filter; and
comparing said value with said predetermined level.”
“These claimed steps of ‘converting’, ‘applying’, ‘determining’, and ‘comparing’ are physical process steps that transform one physical, electrical signal into another.”
Comparing and determining do not transform anything.