Research Corp. v. Microsoft: Section 101 and Process Claims

By Jason Rantanen

There are three articulated exceptions to the scope of patentable subject matter under 35 U.S.C. § 101: laws of nature, physical phenomena, and abstract ideas.  Research Corp. v. Microsoft places a high hurdle in front of challengers who seek to invalidate process patents on the third ground. 

Research Corp. Technologies v. Microsoft Corp. (Fed. Cir. 2010)
Panel: Rader (author), Newman, and Plager

Research Corporation ("RCT") owns several patents relating to digital image halftoning, which is the process of generating electronic display and print images using only a small number of pixel colors (ex.: red, blue and green in the case of color displays) while appearing to present many more colors and shades than were actually used.  Four related patents are relevant to this summary: Nos. 5,111,310, 5,341,228, 5,477,305, and 5,726,772.  The applications for the '310 and '228 patents (a continuation-in-part of the '310 patent) were filed before December 4, 1991; the remaining patents are continuations of the '228 patent and claim priority to the earlier filing dates. 

RCT brought an infringement action against Microsoft based on these patents; in response, Microsoft asserted, and the district court initially concluded, that the patents were unenforceable due to inequitable conduct, invalid and not infringed.  The Federal Circuit reversed that determination in 2008.  Microsoft subsequently sought summary judgment against the '310 and '228 patents on Section 101 patentable subject matter grounds, and asserted that the claims of the '772 patent were not entitled to the earlier priority date, thus rendering them anticipated.  The district court granted Microsoft's motions, and subsequently held that the only remaining claim, claim 29 of the '305 patent, also lacked entitlement to the earlier priority date.  Based on these ruling, the parties stipulated to a dismissal of the suit and RCT appealed.

Section 101 and Process Claims
In reversing the district court's ruling that the '310 and '228 patents failed to satisfy Section 101, the Federal Circuit identified a set of considerations that can be applied when assessing the question of abstractness.  Drawing upon the Supreme Court's precedent in this area, including its recent decision In re Bilski, the opinion first reiterates that there are only three articulated exceptions to subject matter eligibility: "laws of nature, physical phenomena, and abstract ideas." 

Focusing on the category of abstract ideas, the court noted the Supreme Court's admonition in Bilski not to provide a rigid formula or definition for abstractness.  Rather, "the Supreme Court invited this court to develop 'other limiting criteria that further the purpose of the Patent Act and are not inconsistent with its text.'" Slip Op. at 14.  With that guidance, the panel concluded that it perceived nothing abstract in the subject matter of the processes claimed in the '310 and '228 patents.  Specifically, the court observed that:

  • "The invention presents functional and palpable applications in the field of computer technology";
  • Some claims in the patents require physical components;
  • "[I]nventions with specific applications or improvements to technologies in the marketplace are not likely to be so abstract that they override the statutory language and framework of the Patent Act"; and
  • The incorporation of algorithms and formulas does not prevent patent eligibility.

Nevertheless, while finding these factors met in the instant case, the panel further noted that its analysis was limited to the context of Section 101, which provides only a coarse filter.  Abstractness challenges can also be brought against specific claims under Section 112 even if the requirements of Section 101 are met.

Comment: The court's discussion of Section 101 suggests that the issue of patentable subject matter should be analyzed with respect to the patent as a whole; in contrast, Section 112 challenges are analyzed on a per-claim basis.

Burden of Proof for Establishing Priority
In addressing the district court's ruling that the asserted claims of the '772 and '305 patents were not entitled to claim priority to the '310 and '228 filing dates, the opinion reinforced the court's prior ruling that the patent holder bears the burden of establishing priority.  As the court held, although a patent challenger has the burden of going forward with invalidating prior art, once it has done so the burden shifts to the patent holder.  Thus, in an instance where the patent holder attempts to defeat the assertion of invalidity by claiming priority to an earlier application, the patent holder bears the burden of proving the entitlement to priority – including that the claims of the earlier patent are supported by the written description of the earlier specification.

Note: The '772 and '305 patents shared the same specification as the earlier '305 and '228 patents.  If the relevant claims had been contained in the '305 or '228 patents, Microsoft would have had the burden of proving lack of written description, as opposed to the burden resting with RCT.  Thus, the fact that the claims were part of a continuation was highly significant with respect to the allocation of the burden.

Comment: A related issue is who bears the burden of proof in the context of claims to a pre-filing conception or reduction to practice date. Although not mandated by the text of the opinion, which specifically refers to the burden to establish "an earlier filing date," the court's analysis could be read to support the conclusion that the patent holder bears the burden of proof in this situation as well.

After dispensing with RCT's challenge to the district court's allocation of burden, the panel proceeded to address the priority claims on the merits.  With respect to the '772 claims, the panel agreed with the district court, concluding that they were unsupported by the prior disclosure.  The panel did reverse on the '305 claim, however, ruling that to satisfy the written description requirement for apparatus claims, the patent need not disclose every method of making the apparatus. 

206 thoughts on “Research Corp. v. Microsoft: Section 101 and Process Claims

  1. However, in patenting, function does not define a structure

    Cepts where it do.

    Damm that little law.

    And as for you “hitting tee balls”, these chuckles of you swinging and missing are priceless. Svcks to be you though, as this probably brings back up the futile images of you as a chubby kid trying to play ball and bein laughed at.

    Jus so you know that I aint a heartless bsstard, Iza hold my laughter until ya go back to work.

  2. “In information processing, the function defines a structure.”

    And in Wonderland all thoughts are concrete! And cats vanish into thin air leaving only their smiles behind! Then that vanishes too!

    However, in patenting, function does not define a structure, it defines a function. That’s why we call it a function instead of a structure. And no Posita can ever change that by magicking up his own thinking about his own art. Or, for that matter, having a lawlyer like yourself tell him what to think.

    In any event, that is neither here nor there, you are caught up in the wrong battle in this particular thread. The issue at hand is whether your functional recitation captures an abstract idea (which it may or may not), not whether or not it is supposedly a structure to an ordinary artisan. This is why I say that Bilski is a decent decision, it may, and I emphasis may, leave us functional recitations for machines controlling rubber curing, and machining workpieces but it sure as he ck will rid of us functional recitations discussing everyday nonsense that consumer items perform which is really the worst of the smear on patent law. And that’s a step up from before Bilski where people could just claim away and pass 101 every time, although the law itself forbid it since BFD, if not since just B.

    “One skilled in the art would have no problem listing the ways the function could be implemented. ”

    One skilled in the art has no fin’ clue what structure it takes to implement those functions in the case of software. And they’ve admitted as much to my face, many times. Expert testimony is not hard to come by. In the case of some kinds of hardware you may very well be correct. Not only did I never say that enablement was relevant to our current topic, 101, but I also did not say that describing a machine by its function automatically hits you into a 101 wall.

    “What if I’m picturing a Rube Goldberg machine that operates as a random number generator utilizing Schroedinger’s cat?”

    Then you’re visualizing a non-abstract machine with many abstract processes going on/could be going on? I don’t see what is so hard here. When you go to claim the machine you could probably do so concretely, in terms of its structure, or you could try to capture the abstract ideas within the processes that are occuring or by claiming the machine functionally. If you take the former route then you have patent eligibility, if you take the later routes you probably do not. Why is that hard for you to understand or figure out on your own? And if it was easy, why did you bother me with it? I mean seriously, if you’re going to bother me, throw me a fast ball or a change up, don’t just put the ball on a tee just to watch me knock it out of the park.

    Seriously guys, I have a count to finish up before the end of the quarter. I simply can’t spend all day hitting tee balls. If you’re going to say something, make it worth reading and/or answering.

  3. >>based upon function etc., rather than it’s new >>structure

    In information processing, the function defines a structure. Saying something performs a function merely means that it can be implemented in a number of ways that is wasteful (and by statue) not supposed to be listed.

    One skilled in the art would have no problem listing the ways the function could be implemented.

    Rader would eat you alive. Your arguments are quite lame and would not stand up to an honest mind for a second.

  4. There is a fundamental difference here however that you are choosing to ignore, probably willfully, rather than accidentally. One of them is simply something you (and possibly along with the rest of society) are completely making up, divorced from the world around you, like a legal relationship, some math, or a prediction. Whereas the other is merely you holding an image in your mind of something physical or done in the world around you.

    Once you divorce the one from the other you are all set to evaluate whether any of the former category of things is caught up in your claim. And that is done regardless of whether or not the claim itself belongs to the later.

    It seems like you are defining non-abstract to include a mentally constructed (not actual) observation of something that is or can be objectively observable. Meanwhile, you seem to define abstract along the lines of purely subjectively observable. Is that about right? What if I’m picturing a Rube Goldberg machine that operates as a random number generator utilizing Schroedinger’s cat?

  5. “That is where you’re mistaken. All of what is grey to you is in fact abstract (black or whatever). The greyness is merely introduced as a strawman.”

    You’d make a fine Fed. Cir. judge. You’re well qualified to make pronouncements without any analyis. You and Rader would get along just fine I would imagine.

    You’d make a horrible advocate.

    You make an even worse examiner.

    Lulz

  6. “6, if there is a machine sitting there determining whether a woman has a lump that needs a biopsy, is that abstract?”

    Doesn’t matter, you mixed statutory classes, you therefore fail 101 as a matter of course. Drop your claim into a stat class and try again. Either recite the machine, or the method.

    “A machine doing something people can do. And, let’s say that it is built all in hardware with special purpose chips.”

    A machine is not abstract regardless of whether it is doing something people do or not. If it is all built in special hardware with special purpose chips then all the better, you might even distinguish over the prior art when time comes to apply it.

    “Your argument is that, gee, I could take a general purpose computer and write software to do what you did, so what you did is abstract.”

    I did not make that argument. However, you may make that argument if you like. That said, a manner of operating the machine, or method steps carried out thereby may very well be abstract. That is, if you get into distinguishing your machine based upon function etc., rather than it’s new structure (i.e. that special hardware you were talking about) you may very well end up catching an abstract idea in your claim.

    “Rader and the SCOTUS refers to the information age because they get (at least 4 1/2) of them that information is being processed.”

    So what? Nothing, oh wait, that’s what.

    “Rader would not tolerate you for a second. In fact, I would love to see Rader rip you to shreds in one of his classes, which he would gladly do. ”

    Lulz, with his astounding knowledge of Diehr? I like the guy, and he’s halfway knowledgable, but his tearing me to shreds is lolable.

    “there’s a rather large grey area. ”

    That is where you’re mistaken. All of what is grey to you is in fact abstract (black or whatever). The greyness is merely introduced as a strawman.

  7. “Because this is a term of art that is not referring to the abstractness of thinking itself, but rather to the abstractness of the subject matter being thought about. That’s why ‘abstract idea’ is not simply repeating that ideas are abstract in and of themselves occuring.”

    He is correct on this point. Thinking about a method of manufacturing a integrated circuit is not an “abstract idea.” Thinking about a method of facilitating forming friendships is probably an “abstract idea.”

    Of course, that doesn’t really help us because whereas there are areas of black and white, i.e. some “ideas” are clearly not abstract and some “ideas” clearly are abstract (e.g. purely mathematical equations/formulas), there’s a rather large grey area.

    Rader’s opinion in this case is no better than Kennedy’s in Bilski: We know “abstract” when we see it.

    Anybody hoping for any court to provide a test or bright line rule for determining abstractness is going to be waiting for a very long time.

    Move on.

  8. You have a huge mental barrier which you’ve errected to deny patents in certain fields.

    Fixed.

    Your “answer” crossed in the stream. Unfortunately, it still appeared here (unfortunately, as it is gobblygook). “but rather to the abstractness of the subject matter being thought about” Doncha mean: “rather to the abstractness of the nature of the subject matter being thought about“?

    Iza see ya got lost in the layers of abstraction.

  9. 6,

    Ya spinnin your wheels Sunshine.

    In fact, you have moved one abstraction layer down in goin to the “nature of the subject” from “the subject.”

    But Iza waitin for ya to actually answer the question – loads of chuckles forthcoming.

    the result that has been mandated by law…

    It’s no “pet peeve”. It’s da lawl. Sorry you don’t like it.

    Letz see a cite for this lawl on the instructions for a computer.

    6; “Oh, um, it’s right here, no wait, here, no, um, it was a here a minute ago, here, um no that’s Allapat, I don’t want to see that, um here, no….

  10. 6, if there is a machine sitting there determining whether a woman has a lump that needs a biopsy, is that abstract?

    A machine doing something people can do. And, let’s say that it is built all in hardware with special purpose chips.

    Your argument is that, gee, I could take a general purpose computer and write software to do what you did, so what you did is abstract.

    Rader and the SCOTUS refers to the information age because they get (at least 4 1/2) of them that information is being processed.

    Rader would not tolerate you for a second. In fact, I would love to see Rader rip you to shreds in one of his classes, which he would gladly do.

  11. “The idea itself is still an abstraction. It is that very nature that you are “choosing to ignore, probably willfully, rather than accidentally.””

    No, it is that part of the nature of the idea that is irrelevant. This term of the art “abstract idea” is drawing a line amongst the nature of the subject of the idea, not that the idea itself is abstract.

    That’s one way of explaining it in terms that you’d understand anyway. You have a huge mental barrier which you’ve errected to protect patents in certain fields. Let it go. And consider the subject with an open mind. Start from the beginning with a clean slate.

    “So you still have not answered my question:
    How is it that ANY “idea of” or thinking about anything…
    is anything but abstract?””

    Because this is a term of art that is not referring to the abstractness of thinking itself, but rather to the abstractness of the subject matter being thought about. That’s why “abstract idea” is not simply repeating that ideas are abstract in and of themselves occuring.

    This is something which I try to impress upon people every time I discuss the issue. The use of the term “abstract idea” is one fraught with symantic twists and turns that are too easy to get caught up in. You must realize that there are two ways of using the term. One, your way, makes no sense and renders the whole analysis nonsense as you and NWPA etc. would have us believe. Since we’ve now had some very intelligent and powerful people tell us that it is not nonsense, consider for a moment that there might be a second interpretation, perhaps the one offered by myself above. One which, magically, makes all the precedent make perfect sense, and make a useful tool in applying 101.

    Gee, I wonder which one could possibly be the correct interpretation?

  12. “That does not matter. Not in an instant. You are merely pointing out the subject of the abstraction.”

    No actually I’m not just pointing out the subject. I’m pointing out the nature of the subject. There is a difference. And once you grasp that you’ll have a better understanding of what is going on in your lawl.

  13. “So, 6, you are a wonderful example of how judicial activism may be used to achieve whatever result is desired. Your little black list of subject areas that you deem abstract is cute. I am glad we have Rader and Newman to keep you and the other crazies at bay. G*d help us when Moore takes over or if Obama gets another one in the SCOTUS.”

    Desired result has nothing to do with it. The result is what it is, and it has been that way for a long time. The only “desire” I have is to see the result that has been mandated by law for a long, long, long, long time come about. I admit, you tards have been taking your sweet time getting it done.

    And my blacklist (and whitelist for that matter) was just some highlights from amongst a practically infinitely long list.

    Don’t worry, Rader is on my side as well. All I have to do is hold his hand through the parts he has trouble understanding.

  14. “I realize that this is a pet peeve of yours, but “instructions for a computer are every bit “done in the world around you.””

    Sure money exists too, but those kinds of ideas have a fundamental abstract idea behind each of them that is preempt necessarily anytime you’re thinking of those things.

    It’s no “pet peeve”. It’s da lawl. Sorry you don’t like it.

  15. Know … Knows>>6, … You need to understand the facts here.

    Good luck with that. The boy revels in swirling abstracts churning through his brain.

  16. 6,

    I realize that this is a pet peeve of yours, but “instructions for a computer are every bitdone in the world around you.”

    They are an element of a computer system. It has been proven that they are interchangeable with hardware. Like it or not, they are deserving of patent protection like everything else on your first list.

    You need to understand the facts here. You need to understand the law here.

  17. So, 6, you are a wonderful example of how judicial activism may be used to achieve whatever result is desired. Your little black list of subject areas that you deem abstract is cute. I am glad we have Rader and Newman to keep you and the other crazies at bay. G*d help us when Moore takes over or if Obama gets another one in the SCOTUS.

  18. One of them is

    That does not matter. Not in an instant. You are merely pointing out the subject of the abstraction.

    The idea itself is still an abstraction. It is that very nature that you are “choosing to ignore, probably willfully, rather than accidentally.”

    So you still have not answered my question:

    How is it that ANY “idea of” or thinking about anything…

    is anything but abstract?

  19. “That’s what ideas are – abstractions.

    Anything you hold in you mind, in your imagination is an abstraction.”

    There is a fundamental difference here however that you are choosing to ignore, probably willfully, rather than accidentally. One of them is simply something you (and possibly along with the rest of society) are completely making up, divorced from the world around you, like a legal relationship, some math, or a prediction. Whereas the other is merely you holding an image in your mind of something physical or done in the world around you.

    Once you divorce the one from the other you are all set to evaluate whether any of the former category of things is caught up in your claim. And that is done regardless of whether or not the claim itself belongs to the later.

  20. Non-abstract:
    the “idea of”/you thinking about…

    How is it that ANY “idea of” or thinking about anything…

    is anything but abstract?

    That’s what ideas are – abstractions.

    Anything you hold in you mind, in your imagination is an abstraction.

  21. “I swear to go d we’re going to end up having to take care of our son until the time he is 40 if we don’t get him off his lazy arse now.”

    FIXED

  22. lulz. Broje. Twisted is what the lawl is right now. That’s most certainly not any misunderstanding on my part. Read the cases again. From the beginning, after having read what I wrote. Try to lay off of your myopic focus on what you already think is there (especially anything having to do with “oldness” of subject matter) and simply read what the words on the page tell you.

    Start at Benson line 1 and read through the last line of Bilski.

    Every single thing that I’ve said will become very clear to you.

    If you don’t want to put in the effort then that’s fine with me. It’s all a very complicated mess at this point.

    Lawlschool is on the backburner for now, I’ve got nothing going on in my life but problems and ridiculousness. I swear to go d I’m going to end up having to take care of my parents by the time I’m 40 if I don’t get them off their lazy arses now.

  23. 6, you have some twisted misunderstandings there. Maybe law school will teach you how to read a line of cases, instead of jumping to these wild conclusions. How’s that going BTW?

  24. “I’m really confused. First, you say noooooooo and that you do thaink that there are abstract ideas and non-abstract ideas, and that preemption doesn’t apply if the claim covers the entire non-abstract idea.

    But then you go on and basically restate and agree with everything I said. Will you please make up your mind?

    Will you please also give us a list of example “abstract ideas” and “non-abstract ideas” so that we can try and figure out from context what you are trying to say? For a non-abstract idea, please try and give us an example claim that essentially “preempts” the non-abstract idea, so that we can see an example of a claim that, in your view, id still patentable under 101 despite preemption.

    Thanks in advance.”

    I don’t see how you can be that confused. I’ve told you this several times now and I even put it into words that you should easily understand as they are almost your own, save with very large caveats.

    “First, you say noooooooo and that you do thaink that there are abstract ideas and non-abstract ideas, and that preemption doesn’t apply if the claim covers the entire non-abstract idea.”

    Lets take this one thing at a time. I do think there are “abstract” and “non-abstract” ideas insofar as you want to use those terms. But preemption does apply if the claim covers the entire non-abstract idea IF it also covers the entire abstract idea AS WELL as covering the entire non-abstract idea. Preemption would not apply if the claim is ONLY covering the entire non-abstract idea and no abstract ideas are caught up in there with it.

    As to your believing that I was stating that I substantially agree with you, well, not really. I included many very important caveats in the piece I wrote. If you read it and pay attention you might notice them.

    “Will you please also give us a list of example “abstract ideas” and “non-abstract ideas” so that we can try and figure out from context what you are trying to say? For a non-abstract idea, please try and give us an example claim that essentially “preempts” the non-abstract idea, so that we can see an example of a claim that, in your view, id still patentable under 101 despite preemption.”

    Sure thing.

    Non-abstract:
    the “idea of”/you thinking about…

    blowing glass
    curing rubber
    shaping metal/wood (or other materials)
    chemically treating a workpiece
    a pencil
    a stack of paper
    a filing cabinet
    a computer
    a bicycle
    a car
    a gas tank
    a tv
    a monitor

    Abstract:
    the “idea of”/you thinking about…

    moving some numbers around in a certain way and/or changing them into other numbers (i.e. doing math)
    hedging some risk
    a plan for your daily activities unrelated to making or changing physical objects
    a plan for writing instructions for a computer
    written instructions for a computer
    instructions for a computer
    instructions for a human
    monitoring something (especially where it can be done by eye)
    comparing something like a number to another number(especially where it is just doing math or can be done in your head)
    that a prediction can be made based upon certain criteria
    changing a “relationship” such as a legal relationship (including indebtedness), romantic relationship, friendly relationship, relationship between two numbers, etc.

    Oh and NWPA, what specifically do you want to know?

  25. “That post-solution activity is insiginificant, in Steven’s view, if the process or device is entirely old, but significant if it has some new steps or hardware.”

    Close, but no cigar broje. You got the part before this correct, and you’re also correct that IANAE has a slightly different view, and also that he is implicitly mistaken on this sub-point.

    It is insignificant, in Stevens view, if it is insignificant. It is a situation of “you’ll know it when you see it” like obscenity is to certain justices iirc. One thing which must be true however, in order for it to be insignificant, is that it must be old. One thing, amongst some others, that would likely preclude it being called insignificant, would be that there is some new step or hardware. You might be tempted to ask, well 6, what other things would make one consider it not insignificant? Well, perhaps you have laid out in the spec or claims that it took some special way to implement the solution (or algorithm or whatever) to the computer environment rather than just plain ol’ everyday know how, where it wouldn’t work otherwise. In that event, your putting the solution (or algorithm or whatever) in the computer environment would likely be significant.

    And just fyi, that is the current law today, it isn’t only what Stevens believed or what the law was pre-bilski or pre-diehr.

    “And that is why Stevens went on and on about the recited equipment and process steps in Diehr being old.”

    Nah, if you bother to read the decision it is quite clear he goes on about that because he is performing a claim construction in an old-school manner. Looking to the spec to see what, blatantly, the inventor is presenting as his contribution to the art. I just pointed that out to you above.

    “The application of the alarm update lagorithm in Flook to a catalytic conversion process surely results in a new and improved catalytic conversion process as well. ”

    You say that, but there is no evidence of that from the Flook disclosure. But you’re right that there is a good chance that this is the case “irl” and that Diehr is merely a triumph of claim form over invention substance. That is to say, Flook could have simply put in more disclosure about the intended implementation of his process and then added some traditional process steps to his claim and got himself a patent. However, Flook did not do that, for whatever reason, and thus we’re left merely conjecturing about what he could have done, and whether or not any such claim that he could have made would have been worth $$$ or not (perhaps Flook was really after potential infringers outside the chemical art, who knows?).

    As you no doubt are becoming aware, according to Diehr you simply put more in the claim than you otherwise would have to in order to pass 101 and then you skate on by. Fact is, if the law cared about substance then it would mandate claim construction to be performed as Stevens did in his dissent insofar as the 101 inquiry is concerned (not for 102, 103 etc. though obviously), and you’d have to look to the spec to see what the actual improvement, contribution to the art, or “invention” was, regardless of what extraneous verbiage the inventor decided to add in the claims, and then you decide the 101 inquiry based upon that rather than upon the fully modern-construed claims.

    Alas, substance never was much of a concern to the lawl post-1952 and only rarely do we see it triumph over form in modern times. In fact, you will note that this is generally historically true in many fields of lawl, not just patent law and does in fact come part and parcel with the decline of america’s greatness. The last five decades of relative bad judicial discretion at the end of the 20th century has really taken a toll on the country. And there are precious few signs of this trend turning around anytime soon.

    “but that the limitation should be ignored as insignificant post-solution activity purely because it’s not new.”

    Now broje, not “purely” because it wasn’t new. It was “purely” because it was insignificant in so far as its impact on what was being preempt, the fact that it was old was ancilliary to this judgement. There is no “pretending” required to notice this. Did you manage to read all that he said instead of focusing myopically on the “old” part?

    Look at this claim broje:

    “”1. A method for updating the value of at least one alarm limit on at least one process variable involved in a process comprising the catalytic chemical conversion of hydrocarbons wherein said alarm limit has a current value of”

    “Bo + K”

    “wherein Bo is the current alarm base and K is a predetermined alarm offset which comprises: ”

    Page 437 U. S. 597

    “(1) Determining the present value of said process variable, said present value being defined as PVL;”

    “(2) Determining a new alarm base B1, using the following equation:”

    “B1=Bo(1.0-F) + PVL(F)”

    “where F is a predetermined number greater than zero and less than 1.0;”

    “(3) Determining an updated alarm limit which is defined as B1 + K; and thereafter”

    “(4) Adjusting said alarm limit to said updated alarm limit value.””

    Look at it. The only thing in the claim other than the formula is:

    A method for updating the value of at least one alarm limit on at least one process variable involved in a process comprising the catalytic chemical conversion of hydrocarbons

    May as well call it the preamble. Clearly, “the catalytic chemical conversion of hydrocarbons” is nothing more than a draftsman playing a silly game. The draftsman there imported form, but he didn’t bring even a remote semblance of substance like they would later try in Diehr.

  26. TINLA: So Flook would pull out the algorithm, then discount anything that’s old as insignificant post solution activity.

    IANAE: Technically pre-solution activity, though they didn’t say as much. The only thing non-abstract about Flook is where you get the numbers for the calculation. You could easily infringe without doing anything petrochemical or catalytic at all, simply by running some software on numbers you got on the internet.

    Diehr’s activity wasn’t post-solution, it was solution. The solution is an improved process for curing rubber. Maybe Diehr’s machine-or-transformation (which Flook also lacked) was post-novelty, but it wasn’t post-solution.

    I don’t think you and I understand “post-solution activity” to mean the same thing. Stevens coined the phrase to refer to the situation in which the algorithm is the only new part, and it is the “solution” to the problem that the invention solves. Then, applying it to a process or device is simply post-solution activity. That post-solution activity is insiginificant, in Steven’s view, if the process or device is entirely old, but significant if it has some new steps or hardware.

    In other words, post-solution precisely means post-novelty, as Stevens coined it.

    And that is why Stevens went on and on about the recited equipment and process steps in Diehr being old. The application of the alarm update lagorithm in Flook to a catalytic conversion process surely results in a new and improved catalytic conversion process as well. The differnce is that the Diehr majority most likely would have found the Flook claim to be patentable had the parameter of the process been specified, and Stevens would not (unless it was a new parameter or a parameter to which an alarm had never before been applied.)

    You can repeat all you like that Flook did not dissect out the algorithm from the claim, and then ignore all remaining elements that were old. It’s all there in black and white. And you can pretend that Flook’s claim had nothing left if the algorithm were removed if you want, but the Flook Court obviously didn’t think so. Stevens opined at length in writing the Flook opinion that the claim avoided preemption by being limited to the field of use (i.e., the petrochemical and oil-refining industries), but that the limitation should be ignored as insignificant post-solution activity purely because it’s not new.

  27. “I’m really confused. First, you say noooooooo and that you do thaink that there are abstract ideas and non-abstract ideas, and that preemption doesn’t apply if the claim covers the entire non-abstract idea.

    But then you go on and basically restate and agree with everything I said. Will you please make up your mind?

    Will you please also give us a list of example “abstract ideas” and “non-abstract ideas” so that we can try and figure out from context what you are trying to say? For a non-abstract idea, please try and give us an example claim that essentially “preempts” the non-abstract idea, so that we can see an example of a claim that, in your view, id still patentable under 101 despite preemption.

    Thanks in advance.

    Sorry broje, I missed you posting that. I’ll get back to you sometime tonight I’ve got some work that needs doing atm.

  28. “6, you spout off about engineering. What degrees do you have?”

    Better ones than you do :) In all srsness though, I’m not just “spouting off” about engineering and you know it. I know very well what I’m talking about and you’re well aware of that, as are the rest of the attorneys who practice before me.

    And btw, “abstract” rejections/invalidations will never go out of style :)

    “Um, that’s kinda the point of the posts above, aint it?”

    Nope, but you’re too retar ded to realize that ping. Sorry.

    “Sorta like what the majority said flat out in Bilski ”

    That BFD is all good law? Kind of like that?

    If you’re trying to make a point pingerdoodle I suggest you do so rather than just blabber on about nothing of substance all day. I’m not going to bother reading your stuff otherwise. I’ve already cut off AI.

    You can blather all you like to someone who cares. I can read clearly what the law said, what was clearly stated to be the law in Bilski, and was furthermore explicitly confirmed to be the law in this very instant decision (though it was probably horribly misapplied here). I have no need to listen to you guys calling the law nonsense, or blathering about one judge making a different claim construction and coming to a different decision than the majority did somehow changing what the law in fact is.

    I took the time to help broje because I believe she actually tries to understand the law but simply fails because she’s partly incompetent. That is excusable as she does at least try to remedy the situation and is quite willing to try to understand the remedy. But I’m way past caring what tards like yourself think. You’re unconvincible not because you believe yourself to be right, or even because of your beliefs in general. You believe yourself to be right only because you’d have to admit you’ve been illegally fuc king people over, not to mention doing your job poorly, for a significant portion of your life. As well the small issue of you simply not being able to comprehend how to apply the law as it currently stands and your being terribly troubled by that. All of that is on you, not me, and I’m tired of listening to your rationalizations.

    The same somewhat goes for NWPA, although his issue is likely more just him having a different world-view from most people. He’s incompetent, sure, but the thing that compounds that in this particular area is that he is incapable of taking an objective view of what is, in essence, “his baby”. He is entirely too attached to things such as computing etc. to be able to take a step back and say: “You know what, you’re right, what we’re doing is applying abstract ideas to computing and the claims we’d like to have violate fundamental patenting principles” Or to say: “You know, the SC is right that natural laws, phenomena of nature, and abstract ideas should not be patented in and of themselves as they are plainly not meant to be covered by 101″ Or to say: “You know what, what we’re doing with computer science is terribly good stuff, and is very important, but the fact is patent law was never meant for this type of advances and was not and is not setup therefore even in the slightest. Perhaps we should seek a different way to help software authors.” It is, in his case, literally a case of what you could call “mama bird syndrome”. His baby is special therefore it deserves special treatment. Except that it is only special in the same way that every other “child” is, and it doesn’t deserve special treatment.

    In any event, say something of substance or don’t expect a lot of replies.

  29. Let me ask you this. If Flook’s claim came before the Supreme Court today, would it be statutory? I’m pretty sure it wouldn’t (but Actual Inventors would still “win”, somehow). If you have a better test for whether a case has been overruled, I’d love to hear it.

    IANAE your logic has more holes than a vegas hotel. I have a question that is actually relevant.

    If Bilski had drafted his application and claims so that his invention could not be practiced by mere thought or verbal communication would the Supreme Court have granted his patent? The answer based on the current case law is yes.

    You can rationalize all you want with your revisionist history but it won’t change the fact that Actual Inventors win in 2010!

    SCORE CARD

    Diehr upheld and limits Flook and Benson!

    MOT as sole 101 test struck down!

    Concept and Application analysis test affirmed by SCOTUS and now being used by CAFC!

    Business Methods allowed!

    Software still Patentable Subject Matter!

    Actual Inventors and all their high priced smarter than INANE, 6, and MM Attorneys throw a capitalism party!!!

  30. TINLA: And yet, this latest decision would seem to let some claims through 101 on the basis of the contents of the specification, and/or other claims.

    And yet, that’s just as obviously wrong, and I’ve said as much in the threads about such decisions. Surely you agree with that, at least.

    While we’re at it, let’s consider all the claims of a patent novel when there’s novelty recited somewhere in the spec, or in some of the other claims.

    TINLA: So Flook would pull out the algorithm, then discount anything that’s old as insignificant post solution activity.

    Technically pre-solution activity, though they didn’t say as much. The only thing non-abstract about Flook is where you get the numbers for the calculation. You could easily infringe without doing anything petrochemical or catalytic at all, simply by running some software on numbers you got on the internet.

    Diehr’s activity wasn’t post-solution, it was solution. The solution is an improved process for curing rubber. Maybe Diehr’s machine-or-transformation (which Flook also lacked) was post-novelty, but it wasn’t post-solution.

    TINLA: In other words, Stevens was looking for new, and therefore, significant post solution activity. His dissent in Diehr is the nail in the coffin of your argument.

    If we’re going by Stevens dissents, have I got a story for you!

    Let me ask you this. If Flook’s claim came before the Supreme Court today, would it be statutory? I’m pretty sure it wouldn’t (but Actual Inventors would still “win”, somehow). If you have a better test for whether a case has been overruled, I’d love to hear it.

    New Light: It would do all of us better if we had less snark and more substance from you.

    I apologize for my mildly hyperbolic snark, but I maintain it’s less objectionable than your breaking the bold tag to point it out.

  31. “Try watching a National League game sometime.”

    “Which is why IANAE said that if your average is .250, you better be a pitcher.”

    Lulz

    Two nitwits who don’t understand baseball.

  32. One in four for a pitcher is phenomenal.

    Uh, yes, but not great (although not horrible) for all the other positions. (Actually, there were 6 pitchers in 2010 with over 25 at-bats and aversges over .250, so “phenomenal” is perhaps a bit hyperbolic.) Which is why IANAE said that if your average is .250, you better be a pitcher. A great command of statistics, in your post, New, but perhaps a little deficient in logic?

  33. 6, you are just a dopey id$ot.

    Sorry, boy, go and learn some engineering and learn that this abstract nonsense and this law of nature and mathematical what junk is ridiculous with no basis in science or engineering. I am sorry, boy, but that stuff is from centuries long since past.

  34. OK, the kids have broken the internetz again.

    6,

    That’s the only things that lead him to a different conclusion than what the majority entered.

    LOLz 6 – ya be displaying your reading comprehensionlol again.

    And to be sure, if you accept his claim construction then you’re no doubt well aware that Benson/Flook would take the claim out in a heartbeat.

    Um, that’s kinda the point of the posts above, aint it? Stevens was where in Diehr? Stevens in Diehr was the same Stevens in Benson/Flook. I knows logic aint your bag 6, but when the opinion-man goes from majority to dissent, ya probably gonna have that later decision controllin the earlier decisions. Sorta like what the majority said flat out in Bilski (which evidently still rocks the horsemen’s senses silly – some things are harder to re-write in hindsight than others, but no doubt my main man will continue the spin attempts – but dude, when Dim Light schools ya… ouch).

    They teach that in law school, ya know. Oh wait,… ya don’t. Oh well, svcks to be you.

  35. 6: “You simply must remember that back in the ancient days there was a lot of looking to the entire app to figure out what the invention was, rather than limiting what you were looking for only to the claims. Claim construction was not so refined as it is today.”

    _________

    Wait…whatever happened to patentee, acting as his own lexicographer ? This is why claims must be read in light of the application.

  36. “His dissent in Diehr is the nail in the coffin of your argument. ”

    You wish broje dearest.

    The only thing “wrong” about Steven’s dissent is that he falls prey to the “invention as a whole as disclosed in the entire application” way of construing claims trap just as the court likely now at the Fed. Circ. some decades later. He also makes too liberal of a claim construction.

    That’s the only things that lead him to a different conclusion than what the majority entered.

    Note that part of the first issue with his dissent is that he also would like to have not put up with the nonsense of letting the applicant define the “invention” but rather examining the application as a whole, rather than confining the inquiry to the claims only. Tbh, patent lawl probably should be this way, but that is not how to construe claims according to modern ways.

    Note him making the same review “concept as a whole as disclosed in the entire application” to determine what the invention is, and the claims should be construed around, mistake:

    In the first sentence of its opinion, the Court states the question presented as “whether a process for curing synthetic rubber . . . is patentable subject matter.” Ante, at 177. Of course, that question was effectively answered many years ago when Charles Goodyear obtained his patent on the vulcanization process. 25 The patent application filed by Diehr [450 U.S. 175, 206] and Lutton, however, teaches nothing about the chemistry of the synthetic rubber-curing process, nothing about the raw materials to be used in curing synthetic rubber, nothing about the equipment to be used in the process, and nothing about the significance or effect of any process variable such as temperature, curing time, particular compositions of material, or mold configurations. In short, Diehr and Lutton do not claim to have discovered anything new about the process for curing synthetic rubber.

    And then observe his diverging claim construction:

    As the Court reads the claims in the Diehr and Lutton patent application, the inventors’ discovery is a method of constantly measuring the actual temperature inside a rubber molding press. 26 As I read the claims, their discovery is an [450 U.S. 175, 207] improved method of calculating the time that the mold should remain closed during the curing process. 27 If the Court’s reading of the claims were correct, I would agree that they disclose patentable subject matter. On the other hand, if the Court accepted my reading, I feel confident that the case would be decided differently.

    And of course claim construction is nothing more than a matter of lawl, and here is a good example of why. Even the best of legal minds can misconstrue a claim. And then the Fed. Circ. does so again… decades later in the instant case. Although in their case at least it was likely simple technical incompetence.

    But at the very least Stevens gives good reasons for his claim construction:

    There are three reasons why I cannot accept the Court’s conclusion that Diehr and Lutton claim to have discovered a new method of constantly measuring the temperature inside a mold. First, there is not a word in the patent application that suggests that there is anything unusual about the temperature-reading devices used in this process – or indeed that any particular species of temperature-reading device should be used in it. 28 Second, since devices for constantly [450 U.S. 175, 208] measuring actual temperatures – on a back porch, for example – have been familiar articles for quite some time, I find it difficult to believe that a patent application filed in 1975 was premised on the notion that a “process of constantly measuring the actual temperature” had just been discovered. Finally, the Patent and Trademark Office Board of Appeals expressly found that “the only difference between the conventional methods of operating a molding press and that claimed in [the] application rests in those steps of the claims which relate to the calculation incident to the solution of the mathematical problem or formula used to control the mold heater and the automatic opening of the press.” 29 This finding was not disturbed by the Court of Customs and Patent Appeals and is clearly correct.

    And to be sure, if you accept his claim construction then you’re no doubt well aware that Benson/Flook would take the claim out in a heartbeat.

    As a conclusion, the USSC hardly bent over backwards in Diehr, they simply construed the claim. In my opinion, I will say they construed the claim properly. Although I see the reason why Stevens would construe the claim differently, we cannot ignore so much of the claim in making the construction.

    In any event, Stevens dissent in no way is a nail in any coffin, from either Flook or from Bilski. That being especially apparent since Bislki goes out of its way to reaffirm Benson and Flook, just as Diehr does.

    “In other words, Stevens was looking for new, and therefore, significant post solution activity.”

    This is true, but he only didn’t find it because of an erroneous claim construction. As he mentions, the case would go differently based on different constructions. Specifically, had he adopted the majority’s construction, I have little doubt that he would have joined them.

    You simply must remember that back in the ancient days there was a lot of looking to the entire app to figure out what the invention was, rather than limiting what you were looking for only to the claims. Claim construction was not so refined as it is today.

    “In dissent, Judge Lane, joined by Judge Rich, argued that Benson should be read as a general proscription of the patenting of computer programs regardless of the form of the claims. 545 F.2d, at 151-152. ”

    That’s interesting to know. It seems that Judge Rich may have, at one time, been on the side of good. Which is pretty crazy since he turns out to be the archnemisis of everything right, pure and just.

  37. IANAE,

    You sure spend a lot of time focusing on snark. But you would do all of us a big favor if you actually spent more of your time on your facts and on law instead.

    Clearly, you do not understand the law as developed in the Benson-Flook-Diehr trilogy. Clearly you do not understand which justices had which opinions. If you did you would have seen the Stevens angle (Stevens was a Douglas protégée, a direct replacement) and you would have understood why Bilski took so long, and why Bilski is truly a nail in the coffin for the Stevens viewpoint.

    You also do not understand baseball.

    You admonish “Try watching a National League game sometime.” after throwing out a comment like “Actual inventors are 1 for 4. Even in baseball, if you do that badly you’d better have a wicked curve ball.

    One in four for a pitcher is phenomenal. “That badly“? The only thing “that badly” is the shameless way you simply makes things up.

    I did a quick Google search and for 2008, here are the National League team batting averages for pitchers:

    link to askville.amazon.com

    Team – Batting Average

    CHN – .206
    STL – .171
    SD – .165
    ARI – .160
    HOU – .159
    MIL – .152
    ATL – .134
    LA – .130
    PIT – .127
    SF – .126
    FLA – .124
    PHI – .124
    COL – .117
    NYN – .117
    CIN – .114
    WAS – .095

    Even the very best wasn’t close to one in four.

    Your posting is shameless. Your emphasis of snark over substance is repulsive. Spend more time with the facts and law before you spout. It would do all of us better if we had less snark and more substance from you.

    Jason: edited for formatting to close the bold tag

  38. Diehr’s “claims as a whole” approach wouldn’t have saved either Benson’s claims or Flook’s claims, and it didn’t save Bilski’s. The Diehr limitation, whatever it may be, isn’t very limiting at all. All Diehr apparently does is limit Flook by saying not to do what Flook says not to do.

    Posted by: IANAE | Dec 15, 2010 at 03:01 PM

    ______

    The above is non sense and does not even rise to the level of conjecture. You are NOT quoting or citing any passage or even sentences from ANY Supreme Court case.

    You are just saying what you believe or want the law to be. Which is fine, you have a right to an opinion.

    But the PTO and all its Examiners are bound by the exact words and instructions of the Supreme Court that interprets the laws.

    And as it stands today, any inventor of a novel new process or improvement of an existing process that is not a law of nature, natural phenomenon, mathematics, or other abstract idea is eligible to receive a patent on that process.

    It does not matter if the process has a machine, or is a machine, or transforms anything anything at all. As long as the process is applied and does not come under one of the Court recognized exceptions stated above, it’s statutory.

    SLAM DUNK!

  39. That was supposed to be, “Well done AI’s dear Diehrist!”

    Anyway, It has been a good afternoon watching IANAE get intellectual B slapped by both Actual Inventors and Attorneys. :)

  40. Dierh had to bend over backwards to essentially overrule that $&@^&*% while pretending not to overule it.

    Posted by: TINLA IANYL | Dec 15, 2010 at 06:01 PM

    ____________

    That says it all!!!

    Unfortunately for IANAE that “$&@^&*% ” is all he/she has left to hang his/her hat on.

  41. IANAE: “Whatever Diehr actually controls, it’s much less than you think it does. “Even Diehr doesn’t think Diehr is limiting Flook. The only person who thinks so is AI.”

    AI’s dear Diehrist: Oh, – AND THE SUPREME COURT MAJORITY TOO
    !!! BILSKI 14 !!!

    IANAE: “A statement of the conclusion you wish was the law, based on an incorrect paraphrase of the Supreme Court.”

    AI’s dear Diehrist: IANAE – you describe yourself. You lose – the more you struggle the worse you look. I would think a real lawyer would recognize that. Actual Inventors win! !!! BILSKI 14 !!!

    _________

    And down goes IANAE!!!

    Well down AI’s dear Diehrist.

  42. That doesn’t make the process a positive limitation. That’s merely the intended source of a data input to the calculation process, in other words a field of use. The actual claim is pure math. The entire claim. If you take out the math, there isn’t only no patentable invention left. There’s no claim left.

    I love the way you redefine “positive limitation” to exclude the “insignificant post-solution activity. And it’s not that there’s no claim left if you take out the algorithm. It’s that the part of the claim that’s left was old, and therefore insignificant post-solution activity. So Flook would pull out the algorithm, then discount anything that’s old as insignificant post solution activity. Just look at flook again:

    “Respondent correctly points out that this language does not apply to his claims. He does not seek to “wholly preempt the mathematical formula,” since there are uses of his

    Page 437 U. S. 590

    formula outside the petrochemical and oil refining industries that remain in the public domain. And he argues that the presence of specific “post-solution” activity — the adjustment of the alarm limit to the figure computed according to the formula — distinguishes this case from Benson and makes his process patentable. We cannot agree.

    The notion that post-solution activity, no matter how conventional or obvious in itself, can transform an unpatentable principle into a patentable process exalts form over substance.

    In other words, Stevens was looking for new, and therefore, significant post solution activity. His dissent in Diehr is the nail in the coffin of your argument.

    Dierh had to bend over backwards to essentially overrule that $&@^&*% while pretending not to overule it.

  43. The process variable could be the distance I park from the curb or the price of the cigarettes, just to name a couple of examples that are “involved” in that process but that clearly have very little to do with catalytic conversion.

    And SCOTUS said that was the basic problem (i.e., the process variable was undefined), which led to the CAFC developing a stance that the claim passes 101 as a “particular transformation” if it recites what the data being transformed represents in the real world. Good eye.

    TINLA: Notice they didn’t even say it had to be in the claim.

    IANAE: If Diehr had said that, especially that last bit, it would obviously be wrong.

    And yet, this latest decision would seem to let some claims through 101 on the basis of the contents of the specification, and/or other claims. I’m sure you’ll agree that some of those claims, examined in a vacuum, would seem to fail 101, but the CAFC appears to be allowing the meanings of words in the claims to be imbued with non-abstractness by the overall teachings of the specification and the contents of the otehr claims. See, for example:

    1. A method for the halftoning of gray scale images by utilizing a pixel-by-pixel comparison of the image against a blue noise mask in which the blue noise mask is comprised of a random non-deterministic, non-white noise single valued function which is designed to produce visually pleasing dot profiles when thresholded at any level of said gray scale images.

  44. “Actual inventors are 1 for 4. Even in baseball, if you do that badly you’d better have a wicked curve ball.”

    You lost me

  45. the more you struggle the worse you look.

    It’s really no struggle for me to point out that you’re wrong, just like it’s no struggle for you to keep repeating the same nonsense based on a case you clearly haven’t even read.

    Actual Inventors win!

    Actual inventors are 1 for 4. Even in baseball, if you do that badly you’d better have a wicked curve ball.

  46. Whatever Diehr actually controls, it’s much less than you think it does.

    “Even Diehr doesn’t think Diehr is limiting Flook. The only person who thinks so is AI.

    Oh, – AND THE SUPREME COURT MAJORITY TOO

    !!! BILSKI 14 !!!

    A statement of the conclusion you wish was the law, based on an incorrect paraphrase of the Supreme Court.

    IANAE – you describe yourself.

    You lose – the more you struggle the worse you look. I would think a real lawyer would recognize that.

    Actual Inventors win!

    !!! BILSKI 14 !!!

  47. WOW! Best smack down of the year!

    Yeah, it’s just your sort of thing. A statement of the conclusion you wish was the law, based on an incorrect paraphrase of the Supreme Court.

    Flook had math. Diehr had chemistry. Diehr wins. Big surprise.

  48. Diehr even goes on to say that the Flook claim could have been patentable if the application had discussed any particular catalytic conversion process. Notice they didn’t even say it had to be in the claim.

    “‘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 . ”

    Now what do you have to say for yourself?

    Posted by: TINLA IANYL | Dec 15, 2010 at 03:38 PM

    WOW! Best smack down of the year!

  49. TINLA: Do I have to point out for you the positive recitation of the process variable, thereby making the calatalytic conversion process a positive limitation?

    That doesn’t make the process a positive limitation. That’s merely the intended source of a data input to the calculation process, in other words a field of use. The actual claim is pure math. The entire claim. If you take out the math, there isn’t only no patentable invention left. There’s no claim left.

    There are clearly problems in Flook. There’s an obvious conflation of novelty with statutory subject matter. But really, I see Flook as a very clumsy way of saying that once you take the math out of the claim, there’s nothing left.

    Curiously, you quote from footnote 12 of Diehr, which reads:

    It is argued that the procedure of dissecting a claim into old and new elements is mandated by our decision in Flook, which noted that a mathematical algorithm must be assumed to be within the “prior art.” It is from this language that the petitioner premises his argument that, if everything other than the algorithm is determined to be old in the art, then the claim cannot recite statutory subject matter. The fallacy in this argument is that we did not hold in Flook that the mathematical algorithm could not be considered at all when making the § 101 determination.

    Even Diehr doesn’t think Diehr is limiting Flook. The only person who thinks so is AI.

    TINLA: Diehr even goes on to say that the Flook claim could have been patentable if the application had discussed any particular catalytic conversion process. Notice they didn’t even say it had to be in the claim.

    If Diehr had said that, especially that last bit, it would obviously be wrong. But that’s not what Diehr said. Diehr said that Flook didn’t even discuss any particular catalytic conversion process – not that such discussion would have saved the claims. They were simply saying how very badly Flook’s application was drafted, and contrasting it with Diehr’s very good application.

    TINLA: Now what do you have to say for yourself?

    I have to say that Diehr and Flook are different enough on the facts that we don’t have to pretend every Supreme Court decision is an earth-shattering departure from the ones before. Besides, the “important limitation” according to Bilski is simply a statement that physical apparatus or processes will get you into the PTO, a statement with which the Flook court would surely have agreed, had it been at all relevant.

    It sounds like Mr. Flook has rather a large cabin all to himself. Even though Bilski never used the word “cabin”.

  50. at least one process variable involved in a process comprising the catalytic chemical conversion of hydrocarbons

    Nobody asked me, but driving to the store, parking the car, and buying a particular quantity of cigarettes is a “process comprising the catalytic conversion of hydrocarbons.” The process variable could be the distance I park from the curb or the price of the cigarettes, just to name a couple of examples that are “involved” in that process but that clearly have very little to do with catalytic conversion. If catalytic conversion is a positive limitation, it’s not a very limiting limitation.

  51. And some 30 plus years later the Supreme Court Majority in Bilski continued to agree with the Supreme Court majority in Diehr.

    And yet, the Supreme Court (not just a majority, all of them) agreed that Bilski should lose for the exact same reason that Benson and Flook lost.

    Whatever Diehr actually controls, it’s much less than you think it does.

  52. Wow, IANAE. Where do I start?

    (the catalytic conversion was not positively recited but merely intended use), and the only real dissection in Flook was to ignore the field of use

    Let’s start by looking at the first few lines of Flook’s claim:

    “1. A method for updating the value of at least one alarm limit on at least one process variable involved in a process comprising the catalytic chemical conversion of hydrocarbons wherein said alarm limit has a current value of Bo + K wherein Bo is the current alarm base and K is a predetermined alarm offset which comprises:
    (1) Determining the present value of said process variable, said present value being defined as PVL;

    Do I have to point out for you the positive recitation of the process variable, thereby making the calatalytic conversion process a positive limitation?

    And as for what Flook did, are we reading the same case? The one I’m reading says this:

    “… the novelty of the mathematical algorithm is not a determining factor at all. Whether the algorithm was in fact known or unknown at the time of the claimed invention, as one of the “basic tools of scientific and technological work,” see Gottschalk v. Benson, 409 U.S. at 409 U. S. 67, it is treated as though it were a familiar part of the prior art. This is also the teaching of our landmark decision in 56 U. S. 112-121. … Respondent’s process is unpatentable under § 101 not because it contains a mathematical algorithm as one component, but because, once that algorithm is assumed to be within the prior art, the application, considered as a whole, contains no patentable invention. Even though a phenomenon of nature or mathematical formula may be well known, an inventive application of the principle may be patented. Conversely, the discovery of such a phenomenon cannot support a patent unless there is some other inventive concept in its application. Here it is absolutely clear that respondent’s application contains no claim of patentable invention. The chemical processes involved in catalytic conversion of hydrocarbons are well known, as are the practice of monitoring the chemical process variables, the use of alarm limits to trigger alarms, the notion that alarm limit values must be recomputed and readjusted, and the use of computers for “automatic monitoring alarming.” [Footnote 17] Respondent’s application simply provides a new and presumably better method for calculating alarm limit values.”

    Then look at Diehr:

    “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 …In determining the eligibility of respondents’ claimed process for patent protection under 101, their claims must be considered as a whole. It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis … It has been urged that novelty is an appropriate consideration under 101. Presumably, this argument results from the language in 101 referring to any ‘new and useful’ process, machine, etc. Section 101, however, is a general statement of the type of subject matter that is eligible for patent protection ‘subject to the conditions and requirements of this title.’ Specific conditions for patentability follow and 102 covers in detail the conditions relating to novelty. 13 [450 U.S. 175, 190] The question therefore of whether a particular invention is novel is ‘wholly apart from whether the invention falls into a category of statutory subject matter.’ … [ Footnote 12 ] It is argued that the procedure of dissecting a claim into old and new elements is mandated by our decision in Flook which noted that a mathematical algorithm must be assumed to be within the ‘prior art.’ It is from this language that the petitioner premises his argument that if everything other than the algorithm is determined to be old in the art, then the claim cannot recite statutory subject matter. The fallacy in this argument is that we did not hold in Flook that the mathematical algorithm could not be considered at all when making the 101 determination. To accept the analysis proffered by the petitioner would, if carried to its extreme, make all inventions unpatentable because all inventions can be reduced to underlying principles of nature which, once known, make their implementation obvious. The analysis suggested by the petitioner would also undermine our earlier decisions regarding the criteria to consider in determining the eligibility of a process for patent protection. See, e. g., Gottschalk v. Benson, supra; and Cochrane v. Deener, 94 U.S. 780 (1877).”

    Diehr even goes on to say that the Flook claim could have been patentable if the application had discussed any particular catalytic conversion process. Notice they didn’t even say it had to be in the claim.

    “‘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 . ”

    Now what do you have to say for yourself?

  53. TINLA IANYL: Diehr specifically criticized the reasoning in Flook, saying that you can’t disect out the old stuff, but must consider the claim as a whole.

    IANAE: Actually, if you read Flook, the Supremes were careful to say that they were not doing exactly that.

    AI: But the Supreme Court majority in Diehr disagreed with the Supreme Court majority in Flook. And some 30 plus years later the Supreme Court Majority in Bilski continued to agree with the Supreme Court majority in Diehr.

    TINLA IANYL is right.

    IANAE is wrong.

    Diehr controls.

  54. Keep on trying that crazy spin IANAE – you are fooling no one.

    One only has to look at the real picture of which justices were involved to see the real slap down in Bilski when Diehr was raised ascendant.

    Stevens lost – his legacy was lost and those like IANAE have also lost.

    Real lawyer indeed – real has been loser is more like it

    Actual Inventors win!

    !!! BILSKI 14 !!!

  55. Diehr specifically criticized the reasoning in Flook, saying that you can’t disect out the old stuff, but must consider the claim as a whole.

    Actually, if you read Flook, the Supremes were careful to say that they were not doing exactly that. Flook claimed a pure calculation in a field of use (the catalytic conversion was not positively recited but merely intended use), and the only real dissection in Flook was to ignore the field of use – something that is still acceptable today.

    Diehr’s claim was a pretty garden variety method claim where one step wasn’t merely “do this” but “do this in a specified way”. I find it hard to believe that such claims were ever generally nonstatutory either before or after Flook.

    Diehr’s “claims as a whole” approach wouldn’t have saved either Benson’s claims or Flook’s claims, and it didn’t save Bilski’s. The Diehr limitation, whatever it may be, isn’t very limiting at all. All Diehr apparently does is limit Flook by saying not to do what Flook says not to do.

  56. AI: Once again read the first sentence of the paragraph,

    IANAE: Once again, read the other sentences of the paragraph. Diehr only “limits” Benson and Flook in the case of “a known structure or process”,

    AI: Well, since we are discussing processes your statement adds nothing new or makes any additional point whatsoever.

    IANAE: And wrong according to Albert Einstein, since Diehr was decided after the other two.

    AI: since it was the Supreme Court that wrote, ” Finally, in Diehr, the Court established a limitation on the principles articulated in Benson and Flook” and not Albert Einstein, your statement is once again illogical and adds nothing to the discussion whatsoever.

    IANAE Rewrites AI’s post and says, “The Court had an opportunity to put a gloss on Benson or Flook or flat out over rule its precedent but instead deliberately affirmed its principles.”

    AI: Since the point proven is that “in Diehr, the Court established a limitation on the principles articulated in Benson and Flook”, your above statement is illogical and adds nothing to the discussion whatsoever.

    IANAE: Get back to me when you’re an Actual Lawyer.

    AI: If your point is to prove your legal competence you failed to do so with me. I would never hire an attorney that used such blatant logical fallacies as a demonstration of legal analysis skill.

  57. Diehr only “limits” Benson and Flook in the case of “a known structure or process”, which wasn’t even new law when Diehr was decided

    I don’t think that’s right. Flook very clearly dissected out that which was known for determining 101 eligibility, and Diehr specifically criticized the reasoning in Flook, saying that you can’t disect out the old stuff, but must consider the claim as a whole.

    That’s not to say that Diehr contradicted the result in Flook, as opposed to the analysis. Diehr made it clear that an application of an algorithm to a known structure or process would be 101 eligible, while saying that the claim in Flook did not meet that requirement for various reasons that make it clear that the catalytic conversion process to which the algorithm was being applied was not really known because it was simply undefined. That’s why a field of use limitation is not good enough, and nor is specifying a category for the process, such that one is trying, as in Flook, to patent the application of the algorithm to any known or unknown process of the category and field.

  58. AI: Once again read the first sentence of the paragraph,

    Once again, read the other sentences of the paragraph.

    Diehr only “limits” Benson and Flook in the case of “a known structure or process”, which wasn’t even new law when Diehr was decided, and certainly wasn’t news when we read it in Bilski.

    AI: Anyone claiming, as it has been done on this blog, that Flook and Benson cabined or limited Diehr in anyway is flat out wrong according the Supreme Court of the United States!

    And wrong according to Albert Einstein, since Diehr was decided after the other two.

    AI: The Court had an opportunity to put a gloss on Benson or Flook or flat out over rule its precedent but instead deliberately affirmed its principles.

    Fixed that for you.

    Get back to me when you’re an Actual Lawyer.

  59. Speaking of case law, I went back to read the Supreme Courts Bilski decision which is the most recent case of 101 in the last 30 years and once again was struck with the power and simple clarity of the Courts words on page 14. I quote….

    “/media/docs/2010/09/08-964.pdf”

    Finally, in Diehr, the Court established a limitation on
    the principles articulated in Benson and Flook. The appli-
    cation in Diehr claimed a previously unknown method for
    “molding raw, uncured synthetic rubber into cured preci-
    sion products,” using a mathematical formula to complete
    some of its several steps by way of a computer. 450 U. S.,
    at 177. Diehr explained that while an abstract idea, law of
    nature, or mathematical formula could not be patented,
    “an application of a law of nature or mathematical for-
    mula to a known structure or process may well be deserv-
    ing of patent protection.” Id., at 187. Diehr emphasized

    the need to consider the invention as a whole, rather than
    “dissect[ing] the claims into old and new elements and
    then . . . ignor[ing] the presence of the old elements in the
    analysis.” Id., at 188. Finally, the Court concluded that
    because the claim was not “an attempt to patent a
    mathematical formula, but rather [was] an industrial
    process for the molding of rubber products,” it fell within
    §101’s patentable subject matter. Id., at 192–193. ”

    Once again read the first sentence of the paragraph, “Finally, in Diehr, the Court established a limitation on the principles articulated in Benson and Flook.”

    Anyone claiming, as it has been done on this blog, that Flook and Benson cabined or limited Diehr in anyway is flat out wrong according the Supreme Court of the United States!

    The Court had an opportunity to put a gloss on Diehr or flat out over rule its precedent but instead deliberately affirmed its principles.

    So as it stands today according to the Supreme Court of the United States. a process invention is statutory unless the process is for claiming an abstract idea of thinking or pure mathematics, or laws of nature.

  60. Will you please also give us a list of example “abstract ideas” and “non-abstract ideas”

    Thanks in advance.

    Posted by: TINLA IANYL | Dec 15, 2010 at 11:11 AM

    __________________

    Hmmm….. Okay I will take a shot at this.

    A process for imagining world peace

    1. Closing ones eyes while sitting at the beach

    2. listening to the sounds of the ocean

    3. visualizing people smiling laughing and getting along with each other.

    ___________________

    Now assuming there is an enabling specification the above process claims are technically an applied process and not abstract. However I do believe the courts would say the process is legally abstract because it’s a method of thinking. This would preempt a thought process. Although I don’t know how an inventor would enforce such an invention even if it did have a patent. I mean how could you ever know what someone was imagining or thinking unless they told you?

    I also assume the same type of legal reasoning could be applied to more so called left brain thinking such as math that you can calculate in your head.

    The Courts in this recent wave of decisions from the upholding of Diehr, to the cabining of CAFC Bilski, has pretty much said let’s leave the abstract ideas to abstract ideas..i.e. thinking, imagining and such. And that’s pretty much all there is to it.

    And this is probably the reason that those that claim there is more write hundreds of words of conjecture but can’t give one citation of case law to back it up.

  61. nonononnonononononnoonnono no. Broje. Look let me restate this for you in the form which you will, from your statement above, understand.

    I think (and the law is, regardless of what I think) that there are “abstract ideas” and “non-abstract ideas”, and that applications of abstract ideas are unpatentable IF THE CLAIM TO THE APPLICATION ALSO COVERS THE ENTIRE (substantially at least, see benson and flook) ABSTRACT IDEA AS WELL. All “ideas” (note that this is a point of semantics), standing on their own, are “abstract” in so far as we are talking about things that are not an “idea” about, oh, say, punching someone, building something, basically MOT. When a claim is “directed to an abstract idea,” that just means that it tries to claim the idea itself (see benson), instead of ONLY an application of the idea, or blatantly comes right out and claims the abstract idea (see flook) without any attempt made to claim an application. On the other hand, if you claim only the application of the abstract idea to an otherwise obviously non-abstract method, AND leave the abstract idea mostly free to the public, then you’re fine (see Diehr) (also see what the Feds thought happened in this case).

    I’m really confused. First, you say noooooooo and that you do thaink that there are abstract ideas and non-abstract ideas, and that preemption doesn’t apply if the claim covers the entire non-abstract idea.

    But then you go on and basically restate and agree with everything I said. Will you please make up your mind?

    Will you please also give us a list of example “abstract ideas” and “non-abstract ideas” so that we can try and figure out from context what you are trying to say? For a non-abstract idea, please try and give us an example claim that essentially “preempts” the non-abstract idea, so that we can see an example of a claim that, in your view, id still patentable under 101 despite preemption.

    Thanks in advance.

  62. And while you are at it, please provide the proper legal citation for this “debunking” – mere conjecture on an anonymous blog does not count.

  63. Malcolm Mooney,

    Both of your links lead to the front page of a 608 comment blog.

    Can you be a little bit more specific?

  64. There is quite a difference. Although I wouldn’t put it past you to miss it.

    You must have missed all those times I distinguished Lowry from Beauregard.

    But thanks for the respect. Means a lot, coming from you.

  65. “is abstract if it is an application of a known principal and is too broad. What?”

    Technically it has nothing to do with the size of the breadth, i.e. that it is “too” broad. It only has to do with what is inside that breadth.

    When you realize that, and the implications thereof, perhaps it will seem a little more worthwhile.

    “Enablement is all we needed to deal with this problem.”

    If what you posted was the problem at hand then yes, you might be right. However, breadth simply isn’t the concern sir, the TYPE of subject matter encompassed is. The USSC only references the “breadth” of the claim to make sure that everyone understands that the subject matter to which they are referring, and have a problem with, is indeed, ALL within the breadth.

    “You don’t want information processing inventions, then you should go to Congress. Maybe you are right. Maybe there shouuldn’t be patents for them. But, fabricating nonsense by judges is not the way to get rid of them.”

    Lulz, I don’t need to. Information processing “inventions” will (practically?) always get a 101 from me without more in the claim. If you think the Board and Feds won’t notice the abstract idea being preempt when I point it out for them then you’re welcome to roll the dice. Your kind may be able to take advantage of Rader’s technical incompetence once, but you wouldn’t fool him with me holding his hand. Just think of what fun we’ll have with a precedent where they do notice what abstract idea is being preempt.

    Who knows? Perhaps we’ll see that shortly in this case.

    “I thought the claims in In re Lowry were perfectly statutory.”

    You might not have noticed but that was less an “information processing invention” and more a “information storage device data structure design invention”. There is quite a difference. Although I wouldn’t put it past you to miss it. You’ll note however, even with your rudimentary understanding, the distinct lack of “processing” and the conspicuous presence of “structures” (as in the physical kind) in Lowry.

  66. This nonsense of “abstraction” is from Benson. Nonsense.

    It may be nonsense to you, but the Supremes are still a fan.

    IANAE, you need to get it right. The Supremes are a fan of Diehr -Benson has been cabined.

    BILSKI 14 !!

    Go back and read the pivotal decision again IANAE, – Bilski 14 tells you what the Supremes value – and it is most assuredly not Benson by itself. Your candy-coating “very specific hardware” fools no one – how you twist at the state that we actual inventors enjoy today.

  67. Enablement is all we needed to deal with this problem.

    Do you think Bilski had any issues with enablement? I would go as far as to say that Bilski’s claims were self-enabling.

    This nonsense of “abstraction” is from Benson. Nonsense.

    It may be nonsense to you, but the Supremes are still a fan. A Supreme Court decision affirmed in a very recent Supreme Court decision is worth more than a dissenter from a lower court. Newman’s definition is worth no more than Rader’s definition, which is “yup, that there’s abstract, boy howdy”.

    The thing about Benson was that it used hardware but not particular hardware, such that the claim still covered the entire abstract concept. It’s what Bilski would have been, had he been able to add “in a computer” or “on an airplane”. That’s exactly how anybody remotely conscious would attempt to claim an abstract concept – by disguising it in cosmetic but meaningless hardware. Diehr, on the other hand, used some very specific hardware to perform one very specific practical application of his abstract concept, thereby leaving the rest of the concept to the public. The Supremes immediately recognized the distinction, and stand by it to this day.

    You don’t want information processing inventions, then you should go to Congress.

    Nobody’s saying that all information processing inventions are ineligible. Well, somebody probably is, but I’m not. I thought the claims in In re Lowry were perfectly statutory.

  68. >>Is that the problem?

    No. It is because it is dopey. Abstraction in patent law is (was) defined very well as explained in the dissent of Newman in Bilski. This new definition of abstract by the SCOTUS in Bilski is ridiculous. Something is abstract if it is an application of a known principal and is too broad. What? Enablement is all we needed to deal with this problem. This nonsense of “abstraction” is from Benson. Nonsense.

    You don’t want information processing inventions, then you should go to Congress. Maybe you are right. Maybe there shouuldn’t be patents for them. But, fabricating nonsense by judges is not the way to get rid of them.

  69. “All one must do is read 6’s explanation of an “abstract idea” to know that this abstract idea judicially created nonsense is nonsense”

    What, specifically, do you have against prohibiting the patenting of the common building blocks of technology NWPA? Seriously, we’re looking to promote the progress, not hamper it by assigning everyone to their own little thought realms, natural phenomena realms or their own little natural law realms.

    Is it only that it renders too many “inventions” of your clients to the dust bin of not being worth patenting because they didn’t invent anything of any worth other than coming up with the underlying idea behind it all? Is that the problem? Because seriously, I can’t think of another problem that you’d be having with it.

  70. Yeah, AI, we have won big time in the courts, and with the removal of the worst PTO director in the history of the PTO. I hear it is now a professional wrestler with a reputation for below the belt kicks.

  71. Ok genius, tell the rest of us what “abstract idea” was preempted by these claims.

    Posted by: Lulz are useful, tangible and concrete | Dec 09, 2010 at 10:03 AM

    __________

    The flaw in his thinking is that any claim that preempts an application is abstract. When in fact as soon as a concept in a claim is applied it is no longer abstract and is therefore statutory under SCOTUS Diehr, Bilski and now CAFC Research Corp. v. Microsoft .

    The court recognized exception is when the application is mere thought or acts of communication. Then a claim so broad as to preempt thinking and speaking about a concept will be considered abstract.

    This will not stop some examiners from instantly applying a 101 rejection for a claim that has broad application even if the claim stops short of thinking and speaking, especially claims not tied to a machine or transforming in the original CAFC Bilski manner, but these rejections can be readily traversed with the proper citation of the controlling case law.

    Its been great year for Actual Inventor winners!

    Happy Holidays all! :-)

  72. Thanks J. Marshall.

    A fancy way to paint your hogwash as having substance.

    Dressing up a pig does not change the pig into anything other than a dressed pig.

  73. 6: >>or blatantly comes right out and claims the >>abstract idea

    All one must do is read 6’s explanation of an “abstract idea” to know that this abstract idea judicially created nonsense is nonsense.

    Thank you so much Mr. Stern and Mr. Douglas for 35 years of nonsense and 100’s of millions of dollars of waste. (and corrupting the minds of dopey examiners.)

  74. There arise from 35 USC 112 and 120 three different and distinct requirements relating to the concept known as “the invention”:

    120 – invention must have been DISCLOSED in accordance w/112p1

    112p1 – invention must be DESCRIBED in writing

    112p2 – invention must be particularly POINTED OUT and distinctly CLAIMED

    I don’t see a big problem here with limiting the concept of “invention” to what is in a claim.

    112p1 subsumes 112p2–the claims are a part of the WD. Remember, 112p1 also requires a description of the “manner and process of making and using” the “invention”.

    112p2 amplifies the 112p1 requirement of DESCRIBING the invention by stating that the invention must be DESCRIBED by “particularly pointing out and distinctly claiming…subject matter”, and that said claiming must appear at the conclusion of the specification (of which it forms a part).

    In effect, 112p2 requires that CLAIMING be the means whereby the invention is DESCRIBED in writing pursuant to 112p1.

    Thus, in order for there to have been sufficient 112p1 DISCLOSURE to satisfy 120, the “invention” must have been claimed.

    So then what is the proper scope of 120? Should it be restricted to divisionals and cancelled claims from the parent?

    Current 120 interpretation is a matter of convenience–a valuable mechanism with an irrational statutory basis.

    Don’t poke it–or else the PTO’s next attempt at a rules package will include a repeal of 120.

    Remember, I said that I didn’t see a BIG problem, not that I didn’t see any problem at all…

  75. So Ping HAVE AT IT!

    Clearly, sarah, you are striking at those who support you.

    You have never been at the butt of any of my jokes. I have always supported you and your right to post in the face of criticism from MM and the derogatory comments of 6.

    I understand your pain and hurt – but do not make the mistake of treating me as an enemy. I may be constrained from helping you in more direct manners, but I believe in you and your cause.

    Godspeed sarah.

  76. May 4, 2010 Ping tells me the Joke is on me.
    In October he tells MM he should be kissing his feet. See I get that joke.. It was on me.

    But my life is not a Joke You see. And I will fight to the bitter end. I didn’t ask for this. And I not one to lay down and take it, like so many before me.
    So Ping HAVE AT IT!

  77. Can you figure out this Riddle?

    If A has no reflection, not even it’s own.
    And B claims to reflects no one.
    Then how can C reflect A, and B?
    And with B being (fluffy or puffy) and different, then why does B reflect A. and C reflect both.
    B is different than A, and C was done so B could come back to life. Then why does C claim connection to A and B?

    And because the Examiners Amendment claims that the prior Art does not have a —- —- and ——– core. Then what the Heck was the Examiner looking at? Can you solve this Riddle?

  78. You started off pretty well there, 6. I’m just struggling to understand why this particular set of claims offends you – I wouldn’t have picked this as even a borderline case.

    I’m reproducing claim 11 of one of the subject patents below. If you don’t mind, pease tell me what “the abstract idea” is that is being preempted here. Is halftoning color images an abstract process or a non-abstract process? Is halftoning color images the only conceivable application for performing element-by-element comparisons of digital arrays of data with at least two independent blue noise arrays?

    A method for the halftoning of color images, comprising the steps of utilizing, in turn, a pixel-by-pixel comparison of each of a plurality of color planes of said color image against a blue noise mask in which the blue noise mask is comprised of a random non-deterministic, non-white noise sin-gle valued function which is designed to provide visually pleasing dot profiles when thresholded at any level of said color images, wherein a plurality of blue noise masks are separately utilized to perform said pixel-by-pixel comparison and in which at least one of said blue noise masks is independent and uncorrelated with the other blue noise masks.

  79. “Abstract ideas may be a dime a dozen, but Diehr nuts are still under a buck.”

    I lulzed most heartily sir. Man how long did it take you to come up with that?

  80. “You seem to think that there are abstract ideas and non-abstract ideas, and that applications of abstract ideas are unpatentable, but all ideas are abstract. When a claim is “directed to an abstract idea,” that just means that it tries to claim the idea itself, instead of an application of the idea.”

    nonononnonononononnoonnono no. Broje. Look let me restate this for you in the form which you will, from your statement above, understand.

    I think (and the law is, regardless of what I think) that there are “abstract ideas” and “non-abstract ideas”, and that applications of abstract ideas are unpatentable IF THE CLAIM TO THE APPLICATION ALSO COVERS THE ENTIRE (substantially at least, see benson and flook) ABSTRACT IDEA AS WELL. All “ideas” (note that this is a point of semantics), standing on their own, are “abstract” in so far as we are talking about things that are not an “idea” about, oh, say, punching someone, building something, basically MOT. When a claim is “directed to an abstract idea,” that just means that it tries to claim the idea itself (see benson), instead of ONLY an application of the idea, or blatantly comes right out and claims the abstract idea (see flook) without any attempt made to claim an application. On the other hand, if you claim only the application of the abstract idea to an otherwise obviously non-abstract method, AND leave the abstract idea mostly free to the public, then you’re fine (see Diehr) (also see what the Feds thought happened in this case).

    This is the law, whether or not the Federal Circuit can bring itself to apply it or not. At the very least, they did at least pay lipservice to it in this case, and the defendants didn’t do jack to hold their feet to the fire. I imagine if you press them they will oblige. But you simply must press them they’re not going to invalidate a patent for you. You can’t just get up and make an allegation and argue the law. You’ve got to involve the FACTS. Which was blatantly ommitted by the defense, at least from what I can see, and was, it appears, miscomprehended by the Fed.

    And be clear, I’m not saying that I’m perfect and that I couldn’t be factually mistaken in this case. But it is rather close to a field of some skill which I possess, indeed that I have studied at some small length. And it does appear that the references in this area, and the spec itself all lend themselves to my point of view. Not to mention that if I were involved in the case (and even as it stands it appears) the patentee himself would probably make sufficient admissions to lend support to my position.

  81. As is well-known, the EPC does not define what is an invention, only what is not. [...] Thus it is, that all sorts of subject matter (including what we are looking at here) goes through to issue in Europe, with no fuss at all.

    Section 101 post-Bilski pretty much only defines what is not an invention. The statutory classes can encompass virtually anything, and there’s only a rule (but not even a test, yet) for three classes of exceptions.

    As for the avoidance of a term that is well-understood to be well-misunderstood, might that be because you effectively left the Germans in charge? Americans love building ambiguity into legal rules and patent claims whenever they can, because it means they can argue their client’s position after the fact no matter what their client’s position turns out to be. Even if the legal basis for that argument is relatively thin.

    It’s not American to agree up front on terms that are unequivocal and accepted as being fair to everybody. That’s why terms like “person” and “invention” and “abstract” are popular. Everyone agrees on those terms, because everyone assumes they mean whatever advances their interests. It’s the opposite of “separated by a common language”. Don’t think “person” should include women or the darker-complected? Don’t think “abstract” applies to your client’s claim? There’s an app for that.

    We like to make a fuss.

  82. Look, tell me, who’s “trying to impose” anything on anybody? Please clarify. Remind me, when was State Street? Before or after 1973? Did it change anybody’s perceptions?

  83. Max –

    “Distinct inventions belong in different applications, if only because PTO searching must be efficient and effective, on every claim that goes to issue.”

    … a classic example of my concern, an opinion that one can only hold if one has no experience with the alternative, and insists on force-fitting an American peg into an EPO hole.

    The whole American system is a different set of balances that all works together in an integrated way, just as EP is. Probably if you imported this single feature of American law into EPO practice with no other adaptation, you’re right, EPO wouldn’t be “efficient and effective” on day 1. Fortunately very few people on this list consider it important to complain about hypothetical worlds where you replace isolated features of one law with the isolated feature of the other.

  84. as such, were well-understood even in 1973 to be unfit for patenting

    cf

    complaints arise from trying to impose more conceptual universality than actually exists, failure to recognize and accept differences

    W

    T

    F

  85. In reply to BB, Europe used to have interminable arguments about the meaning of “invention” which might be why, when it wrote out the provisions of the European Patent Convention in 1973, it took care to avoid using it in any way that would impose on courts a burden to interpret the word. As is well-known, the EPC does not define what is an invention, only what is not. This might be because the drafters knew in 1973 that the future would hold inventions beyond the comprehension of anybody in 1973 (whereas business methods, programs for computers, mathematics, and presentations of information, as such, were well-understood even in 1973 to be unfit for patenting). Thus it is, that all sorts of subject matter (including what we are looking at here) goes through to issue in Europe, with no fuss at all.

  86. ping,

    “serious search burden” = anything more than 1 independent, more than 10 dependents, or reading on more than 1 FIG. Gotta get those divisional filing fees!

  87. INANE: “I’m trying to figure out how I came to be in general agreement with Babel Boy. I should probably have that looked at.”

    LOL. Actually, all 19,000 PatObv users are in general agreement with Babel Boy. It’s just that it will take most of them a life-time to realize it.

    DB: “In the U.S., “invention” and “claim” are one and the same thing (or are supposed to be)”

    Well, yes, one can find instances in the statutes and case law where “invention” is intended to be samey-same as “claim.” But you can find much confusion on that point, too. Take Section 120 for instance, which you raise. It starts off:

    “An application for patent for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in an application previously filed in the United States,. . .”

    120 doesn’t talk about any claims. Doesn’t even mention the word. It is about the disclosure of an invention. It is not possible to reconcile Section 120 with invention = claim.

    An invention can clearly be disclosed without being claimed, in which case there is no equivalence between claim and invention. I agree, that which is claimed falls under the rubric “invention.” I do not agree that that which is legally an invention must be a claim. And I definitely disagree that in any legal sense “claim” and “invention” are necessarily one in the same, with the emphasis on “necessarily.”

    I also disagree with the position that by saying “the invention is x” in the spec puts a limit on what one can or cannot claim. The invention can be x and I can say that, and under Section 120 I can wait to claim the invention I have identified/disclosed until a later application, or not claim it at all, and my present claims are not affected.

    But I agree that it is safer to fudge with “one aspect of the invention is x.” I would certainly not say that “the invention is restricted to x,” nor can I imagine a scenario where I would be tempted to.

    Which brings me back to my initial point — the word “invention” is too hacked up to have much real meaning. It never fails to amaze me how when you get right down to the guts of these basic words, nobody really knows what most of them mean. I guess that’s what keeps us fed.

  88. in anybody’s language, “analogous” comes from “analog”

    How carefully we avoid an etymological critique of ping’s “analysis”. We all know where that comes from.

  89. ping, as to “ownership”, it might help you if you recall that, in anybody’s language, “analogous” comes from “analog” (and not from anywhere “anal”).

  90. Chuckles galore here.

    The best though is HMS Boundy’s “complaints arise from trying to impose more conceptual universality than actually exists, failure to recognize and accept differences

    Bullseye. Maxie owns that failure through and through.

    Question for the Boundy master:

    Concerning the emphasis in your “if the inventions impose a “serious search burden” if together, then they get restricted, else they stay together” comment: Since the Supremes in KSR opened wide the “analagous art” gate to a “similar solution” standard, is there such a thing as “serious search burden”? How much a burden is it for the beneral key word searching done nowadays anyway? Does the applicant get to slap an examiner who requires such a search and then cobbles together a 103 rejection pieced together from widely divergent arts anyway (the examiner effectively contradicting himself that the serach was too burdensome, since he did serached that way)?

  91. How much is the CAFC on board with 6 and his “pre-empt” thinking?

    Not very, it would seem. Preemption is really the only way anybody halfway-competent would claim an abstract idea (and anybody halfway-competent would try), and those are exactly the cases we want Bilski/Benson to catch. The Diehr rule for letting the practical applications through is already pretty well-used where it applies. I was pretty surprised that so soon after Bilski, they’re already setting explicit precedent for not thinking too hard about 101.

    Before and after Bilski, their 101 decisions seem result-oriented and spec-oriented. If the utility in the spec seems clever or important, they’ll shoe-horn any claim into the Diehr framework. Sure, the challenger can identify whatever abstract concept he wants, but Diehr had math so anything goes. I was particularly surprised to hear that Diehr wouldn’t work without the math, since that’s how the prior art had been doing it for some time.

    Abstract ideas may be a dime a dozen, but Diehr nuts are still under a buck.

  92. IANAE, I have been thinking that the point made by 6 some time ago might be apposite. What I mean is, it is not so much whether claim 1 is “directed to” or explicitly recites: Abstract idea, comprising…..We will wait along time for such a claim, I am sure.

    Rather, it is a question whether a claim to: Process comprising…..or Apparatus comprising…..is effective to “pre-empt” the abstract idea.

    How much is the CAFC on board with 6 and his “pre-empt” thinking?

    David again I think you make my point. Distinct inventions belong in different applications, if only because PTO searching must be efficient and effective, on every claim that goes to issue.

    At least, that is exactly how it is, at the EPO.

  93. David, Max,

    That’s a very interesting exchange you’re having, and imma let you finish, but surely the 101 issue can only ever be about whether the claimed invention as a whole is directed to an abstract idea or to a practical application.

    It would be nonsensical, wouldn’t it, for a spec describing a specific practical application (say, a method of curing rubber) to somehow redeem a claim to an abstract idea (say, the Arrhenius equation).

    And isn’t the whole point that we don’t allow people to monopolize (i.e., claim) abstract ideas?

    In other news, I’m trying to figure out how I came to be in general agreement with Babel Boy. I should probably have that looked at.

  94. Max –

    The 80 inventions were voluntarily segregated into about 25 applications, some with one invention each (in method and apparatus form), some with four or five if closely related. Some were so conceptually separate that it would indeed have been inefficient to keep them together.

    No, nothing in our statute requires “restricting to one invention before a patent can issue,” as I’m sure you’ve observed. Our statute makes clear that there is no legal infirmity if a single patent covers multiple inventions. (On the other hand, there are a number of legal infirmities if inventions get split, so I don’t allow examiners to restrict finer than the rules.)

    Our PTO is permitted, but not required, to restrict when the inventions are so disparate as to be “independent and distinct” (a legal term of art with decades of encrusted convention). The upshot is a rough proxy for efficiency — if the inventions impose a “serious search burden” if together, then they get restricted, else they stay together.

    My observation of comments over several years is that many complaints arise from trying to impose more conceptual universality than actually exists, failure to recognize and accept differences?

  95. David mine at 8.35 was posted without having had sight of yours at 8.33. But I do not see in yours at 8.33 anything that weakens the point I try to make. In fact, it’s rather the reverse, isn’t it?

  96. Thanks for that David. You write:

    “we keep those separate inventions together in a single application and single patent, because it’s much more efficient for all concerned to deal with the collection in a single integrated unit.”

    as if it is a given. I’m not sure that it is though. For example, does the present case demonstrate your “efficiency” point, I wonder. And incidentally, is there nothing at all in your Statute about restricting one application to one invention, before it can issue?

    I fully understand that you can have 80 inventions in an A (or WO) publication. It is how many you can have in a B publication (the patent that issues) that intrigues me.

    Of course, I fully agree that when on the US playing field one plays by US rules, and by European rules when in Europe. As some here regularly complain, I happen to think that the rules are more universal than some people care to admit.

  97. That said, I agree with you that Rader goofed (rare, but it happens).

    The whole point of a continuation application is to claim a different invention. Our section 120 (our continuation/divisional statute) carefully uses the words “application” “invention” and “disclosed” to mean different things, in a way that makes very clear that it is permissible to claim a different invention if it is “disclosed in the manner provided by [§ 112 ¶ 1]” in the earlier application.

    Maybe Research Tech’s application would have supported a Gentry Gallery disclaimer, but that’s not what Rader did here. This part of the Research Tech decision is a Calvinball.

  98. MaxDrei –

    In the U.S., “invention” and “claim” are one and the same thing (or are supposed to be), and an “application” and “specification” are different. A single specification might disclose many inventions (one research group come up with a new computer system, 80 separate inventions, disclosed in a single specification). If inventions are closely related (for example a computer that achieves a new result, and several of the underlying techniques that enable that result), then in the U.S. we keep those separate inventions together in a single application and single patent, because it’s much more efficient for all concerned to deal with the collection in a single integrated unit.

    Likewise, in PCT practice, you can pay additional fees to keep multiple inventions in a single application.

    So “every patent system starts with the proposition that for each inventive concept you need a separate patent application” just ain’t so.

    In the U.S., to keep “claim” and “invention” coextensive, if your specification says “the invention is x,” well, then the court agrees with you, and says “you said the invention is x, so we construe the claim to mean x, if the words will bear that interpretation.”

    Perhaps different than Europe, but only problematic if you don’t take on an American view point to look at American issues (just as you must find it frustrating when Americans criticize European law only because of self-imposed confusion brought on by trying to force fit European law into an American legal approach).

  99. 6,

    You seem to think that there are abstract ideas and non-abstract ideas, and that applications of abstract ideas are unpatentable, but all ideas are abstract. When a claim is “directed to an abstract idea,” that just means that it tries to claim the idea itself, instead of an application of the idea.

  100. The absence of a certain poster reminds me of the period of time after the Bilski decision was announced.

    Not complaining, mind you – just an observation.

    On the bright side, windmill hunting just got a whole lot easier. Like shooting fish in a barrel.

  101. This question: “What do you mean by “the invention”?” is interesting for your readers from Europe.

    On the one hand, every(?) patent system starts with the proposition that for each inventive concept you need a separate patent application.

    On the other hand, most every patent issues with a multiplicity of claims, each defining an invention. No problem reconciling dependent claims with singularity of invention, but how about a multiplicity of independent claims? Both at the EPO and the USPTO, patents routinely issue with a plurality of independent claims.

    No wonder the courts in the USA have difficulties to decide whether the invention is what is disclosed or what is claimed.

    No such difficulty in Europe. It is the same thing. That is because:

    1. Independent claims in Europe, however many of them there are, must all recite the same combination of technical features, that characterizes the singular inventive concept. Thus, if the inventive concept is XYZ, the method claim recites the steps of X-ing, Y-ing and Z-ing while the apparatus claim recites Means for X-ing etc.

    2. The EPO patent does not tissue till Applicant has brought the specification into full conformity with the claims, as to what “the invention” is.

    If your experience at the EPO is different, please tell.

    Meanwhile, I think that any problem the CAFC has, to discern “the invention” is self-inflicted (and then inflicted on the public). I look forward to seeing how the court will dig itself out of the hole it has got itself into.

  102. No worries; feedback is always welcome no matter the form.

    I’ve often thought that the notion of what actually constitutes “the invention” is an interesting one, and it’s something I’m struggling with myself as well. I think you’re onto something with your CAFC shorthand point – definitely worth further thought.

    I think ‘patent as a whole’ vs. per-claim basis is something the court’s going to have to confront in the future because I see valid arguments in support of both positions – perhaps it will be forced by the method+apparatus context. Or perhaps not – since there’s a good chance that parties won’t invest resources in 101 challenges based on an abstractness theory, and instead save them for 112 – probably the better approach.

  103. Jason

    Sitting in the bath tub tonight I was reflecting on how my “analysis” this morning was overly snide and I apologize for that — for being snide, not for sitting in the bath tub. PatObv is my second favorite way of taking out frustrations from “interacting” with examiners because I can say things here I can’t say in a response to an office action. But I generally try to show more civility towards those who have the courage to post in their real name. Kicking the cat is first.

    You raise an interesting point with respect to the CAFC referring to “the invention.” After wading through a few hundred opinions one begins to realize that nobody knows what “invention” means. It has been used to refer to claims, application, patent, disclosure, and the novel/non-obvious aspects of all of the above, i.e. point of departure from the PA, i.e. “inventive step.” My feeling is that using the term “invention” is just a way the court glosses over what they don’t understand.

    You are going to have a very rough time defending the position that section 101 refers to the “patent as a whole” and is not analyzed on a claim-by-claim basis. A very rough time. What does “patent as a whole” mean for a patent with method and apparatus claims and only the method claims get bounced under 101?

  104. “Generally, my commentary just reflects my initial impressions upon reading the decisons, and is more for purposes of sparking discussion than presenting a view of the case that I think is absolutely required. ”

    You could leave that out and I’m sure everyone would appreciate it.

  105. Babel Boy – I agree, not one of my better write-ups, and your comments about grammatical precision are valid. In terms of the point about the level of analysis, though, I disagree. The quote that John points to relates specifically to whether it is appropriate to dissect the claims to find an algorithm, not to the overall analysis of subject matter eligibility – which the opinion largely treats as involving the patent as a whole, rather than individual claims. For example, the court nowhere examines specific claims – rather, it repeatedly refers to “the invention” in the singular. In addition, the court’s comment that “the fact that some claims” require certain physical components “also confirm the holding that the invention is not abstract” suggests that the overall analysis is not being done on a claim-by-claim basis (If it were, what would be the relevance of this point?).

    That said, I think that the issue is more nuanced than just patent vs. claims, as the ongoing discussion by several commentators suggests. Nor do I think that the opinion requires analysis on the patent-as-a-whole level; rather, I’m just pointing out that, in my view, the opinion suggests (but does not mandate) that interpretation. Generally, my commentary just reflects my initial impressions upon reading the decisons, and is more for purposes of sparking discussion than presenting a view of the case that I think is absolutely required.

    You’re right about 112 not applying to conception and reduction to practice – although the questions are somewhat similar, they’re not the same. The point I was attempting to make is that in the conception/reduction to practice context, there’s a similar issue: whether the burden rests with the patent holder claiming a pre-prior art conception or reduction to practice date or with the patent challenger. In that context, there is some precedent for the burden of persuasion remaining with the challenger (although the patent holder does have the burden of production with respect to evidence supporting its claim to an earlier conception/reduction to practice date). See Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1576-77 (Fed. Cir. 1996).

  106. Well, I admit you are sounding a bit brighter each year. But, you need to break your bond with MM and come to the right side of the force. I suggest reading every opinion written by Newman and Rich.

  107. What I will tell you though NWPA is that I admit that the Fed. Circ. has trouble telling when an applied abstract idea in fact preempts the abstract idea itself, as well as being an applied abstract idea, and falls into an exclusion. They have a long line of cases standing for this proposition, this perhaps being the most recent. And it is a shame.

  108. “That’s right. And it’s a winning argument, because applied is the opposite of abstract”

    Actually it didn’t win. The court reasoned that they didn’t see the anything abstract about the claim. That is what “won” no matter how much you’d like to implicate there reasoning as to what is likely or unlikely. I agree with their statement about it being unlikely, probably 90%+ of filed inventions pass quite easily.

    “This court also observes that the claimed methods in-corporate algorithms and formulas that control the masks and halftoning.”

    You can even tell that they think the mask is something other than the algorithm and formulas themselves even despite the spec telling them specifically that it is. So lolable, they think the mask is a physical thing controlled by algorithms and formulas. That is factually incorrect. The mask literally is the formula/algorithm or, more likely, depending on the embodiment, specifically, a table of values (which are not “controlled” in any way by an algorithm or formula but rather represent the effect that the forumula or algorithm would have if it were applied with machinery that was capable of doing such which we probably have now in 2010 but they probably did not have in 1991).

    But look on the bright side, once a non-patent protectionist court gets a well briefed version of this case and it is set right you guys can still use this as a good case to show your point about the courts being incompetent technically.

    Alright, for srs, last lulz.

    “So, dopey, are you admitting after all these years that if something is implemented on a computer that it isn’t abstract?”

    I don’t know whom you’re talking to tardbreath, but if you’re talking to me, no. And I don’t know what would have given you such a preposterous idea.

  109. So, dopey, are you admitting after all these years that if something is implemented on a computer that it isn’t abstract?

  110. The Bilski reset is a massive opening of the gates of 101.

    AS IT SHOULD BE

    Bilski lost his battle, but won the war.

    BILSKI 14 !!

  111. Their argument is that it is an applied abstract idea.

    That’s right. And it’s a winning argument, because applied is the opposite of abstract: “[I]nventions with specific applications or improvements to technologies in the marketplace are not likely to be so abstract that they override the statutory language and framework of the Patent Act.”

    See, I told you it wasn’t very hard. If it’s an applied abstract idea, then it’s not abstract. You’re now ready (at least in an abstract sense) to apply the coarse filter of Section 101.

  112. “Listen, dopey, get it that you just don’t understand the word “abstract” in the context of patent law. Sheesh! ”

    Even the patentee himself admits as much tard. Their argument is that it is an applied abstract idea. That is, that their intended use here, saves the claim. If you bothered to look into the case you’d know that.

  113. >> a method of halftoning (an abstract concept >>itself)

    Listen, dopey, get it that you just don’t understand the word “abstract” in the context of patent law. Sheesh!

  114. After having taken a gander at the patent itself this case will take on an all new meaning to folks I imagine. The “blue noise mask”, as I suspected, is nothing more than information stored in a PROM. But boy o boy did they put on a show for the court in the patent. They’ve got little pictures that make it look like something real and concrete.

    A representative claim:

    What is claimed is:
    1. A method for the halftoning of gray scale images by utilizing a pixel-by-pixel comparison of the image against a blue noise mask in which the blue noise mask is comprised of a random non-deterministic, non-white noise single valued function which is designed to produce visually pleasing dot profiles when thresholded at any level of said gray scale images.

    In other words, a method of halftoning (an abstract concept itself) by utilizing a comparison of an image against an algorithm in which the algorithm is comprised of a random non-deterministic, non-white noise single valued function which is specifically designed to (intended use).

    That is the basic structure of the claim as we’re looking at it for the purposes of 101.

    In other words, they claim the abstract idea that comparison of an image against an algorithm in which the algorithm is comprised of a random non-deterministic, non-white noise single valued function which is specifically designed will half-tone an image.

    That’s really all counsel had to say to present a good case. Of course, you could move various pieces of that around and simplify it or expand it to include the intended use or to further specify that the blue noise mask in PROM is actually probably a “table” or “nonimage periodic array” of values generated according to the algorithm (in other words, applying the algorithm by applying specific static values rather than the function itself laden with variables).

    Look, I even found the article they published, probably on this very “invention”:

    link to ieeexplore.ieee.org

    You can tell from their article on this filterin technique that it is obviously abstract. It’s the very first word in their paper.

    In any event, as it turns out, counsel may very well have been right that there is literally nothing in the claim except math. Literally nothing. He should have worded his arguments a bit differently at oral argument though. Here, it is a process of a mathematical comparison and I don’t care how good of an authority Rader and Newman are, when their patent protectionism runs amok, we has a problem. Although it is easy to see how they would not have seen anything abstract here. They’re looking at the drawings (like Fig. 4 that they reference) and thinking, ok, so there’s a mask (where they look to Fig. 5 to see what a mask is) in there, and it’s having stuff run through it. Little do they suspect that the “mask” is just numbers and the entire claim says nothing more than: do some math (implicitly in a machine) for an intended purpose ala Flook reborn.

    All in all, this is my final lulz relating to this case. So woefully mispresented by the defense (who I guess figured they have the case in the bag no matter what with their prior art from the oral arguments) and so woefully misconstructed and decided I take my leave of it. I do hope they press for reconsideration or en banc or USSC though. I will lol when Rader gets a helping hand on his Diehr etc.

  115. David Boundy at 11:18 AM is absolutely correct.

    Also crucial — the Supreme Court’s Bilski was a big “reset” button on the whole field… They gave the Federal Circuit a nearly blank slate, and told them to start over. That’s another reason that Research Corp. has lots of room to limit/erode/abrogate Nuijten.

    BILSKI 14 !

    Diehr Rules !!

    Those that decried Diehr and called us Diehr-bots will continue to cry and cry !!!

    Actual Inventors Win !!!! America wins !!!!!

  116. Davey,

    The problem is ya cannot “evolve” Nuijten. Not with the instant Holdin.

    Unless, of course ya count “overrule” as a type of “evolve”. I aints got a problem with that.

  117. 6: “If they were trying to discourage it then they should have said something discouraging directed to it. ”

    What they actually said something discouraging about was doing any sort of analysis or thinking at all.

    Depressingly, the court has decided (as has Cy) that if a claim isn’t openly abstract they’re not going to ask any of the difficult questions that might result in an unpleasant answer.

    So all you examiners out there, unless a claim shows up on your desk wearing nothing but an equation and a feather boa, just move right along to the higher-numbered sections of 35 USC.

  118. ” Improving the processing of those digital images is a real-world, practical concern, quite unlike solving Fermat’s last theorem.”

    Improving the processing of those digital binary numbers into BCD is a real-world, practical concern, quite unlike solving Fermat’s last theorem. Look how far that got them.

  119. “Basic logic still eludes you, huh? No, I know it (abstractness) isn’t there when I don’t see it. Trust me, it’s not the same thing. The PTO spends way too much time looking for it, even when it’s readily apparent that it’s not there.”

    Oh, no, you’re absolutely right, it isn’t the exact same thing. It just leads to the same nonsense and I just stated it that way because that’s the popular version of it. But what you’re saying is equivalent to you knowing non-abstractness when you see it no matter how much you want to mince words and play logic topsy turvy. Abstractness here is a binary concept, either it is or it is not. If you know that it isn’t there when you don’t see it, you also would necessarily know that non-abstractness is there. I’m aware you want me to think the analysis is different, but the result is the same, you know it when you see or don’t see it. Either way, that analysis is as bs as it comes. And I would agree with that bs analysis in some cases, in many where there is a blatant machine or transformation it is an easy call.

    Here, I’m pretty sure, though I haven’t looked at this in awhile, that a “mask” as used here is not a physical component. And the process of masking may as well be “process for converting binary to BCD” I have a sneaking suspicion. Fact is, Rader and Newman, if left to their own devices, would not have denied Benson a patent. All that said, it is far from an easy call in this case. No matter how much ol’ one sentence analysis Rader, and his good buddy patent protectionist Newman, (with plager probably getting dragged along) wants to say it is.

    I don’t think examiners spend too much time looking. Most examiners don’t spend more than a few minutes looking I would guess.

  120. Ping –

    Existence of one thing does not negate existence of another. Panel splits aren’t supposed to occur, but they do — they’re anomalies.

    But existence of circuit and panel splits has nothing to do with the other evolutionary processes of common law, and the constant reinterpretation of old decisions by new ones. The evolutionary processes I mentioned are the heart of the common law process.

  121. “I think your comment suggests the very approach that the court is trying to discourage.”

    If they were trying to discourage it then they should have said something discouraging directed to it.

  122. What this panel cited (similar language is found in the Supreme Court decision of Bilski) is the following:

    Therefore, the Supreme Court has “more than once cautioned that courts ‘should not read into the patent laws limitations and conditions which the legislature has not expressed.’” Diehr, 450 U.S. at 182 (quoting Chakrabarty, 447 U.S. at 308).

    The Supreme Court Bilski language is: In holding to the contrary, the Federal Circuit violated two principles of statutory interpretation: Courts “‘should not read into the patent laws limitations and conditions which the legislature has not expressed,'” Diamond v. Diehr, 450 U. S. 175, 182,”

    Regarding Nuijten, the Federal Circuit presented some analysis (i.e., a signal is not a manufacture based upon an alleged ‘dictionary definition’ of the term manufacture) and concluded “[t]hese definitions address ‘articles’ of ‘manufacture’ as being tangible articles or commodities.” The ultimate case they rely upon is a decision by the Supreme Court of Am. Fruit Growers, Inc. v. Brogdex, 283 U.S. 1, 11 (1931). First, although they referred to a dictionary definition, the Supreme Court never explicitly defined the term manufacture. Two, any modern day engineer could poke a hundred holes through their analysis – basically, if you take their analysis on face value, nothing is a manufacture, but I digress. The second case they rely upon, which cited American Fruit Growers, is Diamond v. Chakrabarty, 447, U.S. 303, 308 (1980), which does not shed any additional light onto the issue besides including the oft-cited “include anything under the sun that is made by man.” Importantly, the “tangible articles” limitation expressed by the Federal Circuit within Nuijten is nowhere to be found in neither of the cited Supreme Court cases.

    Regardless, the Federal Circuit in Nuijten limited the meaning of the term “manufacture” so as to exclude signals. Arguably, this does not square with notion about reading into the laws limitations and conditions not expressed by the legislature. One could easily argue that the Nuijten read into the patent laws a condition (i.e., based, in part, on a 115 year old dictionary definition – the Nuitjen court stated that the Century Dictionary, which was cited in American Fruit Growers, has a publish date of 1895) on the term manufacture that was not expressed by the legislature.

    This is the crux of the Nuijten decision since there is little debate over whether or not a signal constitutes a process, machine, or composition of matter.

    This argument is useless before the USPTO, but it could gain traction before the right panel at the Federal Circuit. FYI, the dissent in Nuijten spent the first 10 pages regarding the majority’s definition of term “manufacture” and issues ancillary to that definition.

  123. “outside the context of Bilski” is a counterfactual that ain’t worth discussing.

    Translation: “Ping, you are so clever, you are 100% correct and I should have never doubted you..”

    Apology accepted Davey.

    Ya see Davey, absent the Supreme Court ruling, CAFC panel decisions happen all the time wherein the later panel does not “decides whether the earlier case stood for a broad proposition or a narrow one, whether there are exceptions, what factors are more important or less important, etc.” – Iza sure ya have heard of circuit splits and panel splits before. And even with Supreme Court rulings, cases don’t neatly fall into prescribed boundary lines, and later panel decisions can (in fact) come out in conflict with earlier panel rulings that them there Supreme case just don’t touch. Like here.

    Just refer to the link that you yourself provided if ya wann brush up.

    Jason: edited for formatting to close the open html tag

  124. No, I know it (abstractness) isn’t there when I don’t see it.

    That would be “don’t ask, don’t tell”, right?

  125. So in other words, you know it when you see it.

    Basic logic still eludes you, huh? No, I know it (abstractness) isn’t there when I don’t see it. Trust me, it’s not the same thing. The PTO spends way too much time looking for it, even when it’s readily apparent that it’s not there.

  126. We already have it on good authority that image processing is patent eligible, so that’s a start, right?

    Yup! And I get to bill most of the time that I spend explaining to Mr. I-really-wanted-to-go-to-law-school-but-those-logic-puzzles-are-really-hard Examiner that my claims to super-cool communications technology really do meet the M-or-T test. So, life is pretty good…

  127. “Instead, they listed several reasons why the claims weren’t abstract – any one of them would have sufficed.)”

    So… a factor test. Listing “reasons” aka factors. Whatever you wanna call it is fine. A “reasons” test is fine with me.

  128. “If the claims are directed to real-world technical problems, then they’re not abstract. ”

    Have you read benson before? lulz. I lulzed at the Dudas part too.

  129. “The point is that if you don’t “see” the abstractness straight away, then it’s not there. ”

    So in other words, you know it when you see it.

    lulz.

    Alright guys I’ve got some stuff to do, I’ll brb.

  130. ping – “outside the context of Bilski” is a counterfactual that ain’t worth discussing.

    But as a hypothetical, a later case (maybe Research Corp.) almost always modifies earlier cases (e.g. Nuijten and Bilski) in some way — the earlier case left some play in the scope of its holding, the later case decides whether the earlier case stood for a broad proposition or a narrow one, whether there are exceptions, what factors are more important or less important, etc.

    Without dissecting these three cases to make sure that this is a perfect illustration of the principle, hypothetically the holding of Research Corp. and Bilski taken together is that where the only disclosed embodiments are “abstract,” then you can’t have a patent. Continuing our not-close-read-but-maybe hypothetical, Research Corp. says that disclosure of non-abstract embodiments is sufficient, even if the claim covers some abstract embodiments.

    There’s no conflict, only a boundary that’s being approached and explored from two different sides.

    For a clear example, look at the Supreme Court’s Chevron v. NRDC cases — since 1984, probably 50 cases just at the Supreme Court that begin by stating a general rule, then setting limits on the rule, creating exceptions, etc. (plus thousands more from the lower courts). The Pierce treatise has about 100 pages explaining Chevron.

  131. “Ok genius, tell the rest of us what “abstract idea” was preempted by these claims. ”

    I believe I alrady analyzed these claims in another thread on this case so I hesitate to naysay my own self. I haven’t taken the time to re-analyze these claims since this decision came out. I’m sure I’ll be bored sometime today I gotta leave something to fill that time.

  132. “palpable is to tangible as functional is to useful…

    All weza need is a mention of “concrete” and we be back at State Street.”

    That is exactly what I was thinking Ping. It was as if… we went full circle and Bilski never even happened.

    You’d think that going the SS route one time would be enough for them, but they just can’t stop.

  133. That quote is the basis for my claim that if you don’t see abstractness right away then it’s [probably] not there.

    By and large, that’s probably correct. My concern is really that applicants will draft with that in mind, and I don’t think it’s good policy to interpret the fact of hiding the main defect of your claim as evidence of its absence.

    image processing, digital communications, computer networking are right in the sweet spot of patentable subject matter these days, if you ask me, and yet we’re having to argue for basic eligibility on a daily basis for claims on this stuff. That’s just silly.

    I’m sure that will subside once the courts get used to where the legal boundaries are and how the old rules apply to the new technology.

    We already have it on good authority that image processing is patent eligible, so that’s a start, right?

  134. Yes, what I’m looking for is an abstract concept. If I don’t find one, I’m done. If I do find one, I must then consider whether that’s what’s actually being claimed. Or, if you prefer, whether that’s “the general subject of the claim”.

    I can live with that summary, provided you don’t hurt yourself (or the claims) trying to ferret out that abstract concept. As the court said: “With that guidance, this court also will not presume to define ‘abstract’ beyond the recognition that this disqualifying characteristic should exhibit itself so manifestly as to override the broad statutory categories of eligible subject matter and the statutory context that directs primary attention on the patentability criteria of the rest of the Patent Act.”

    That quote is the basis for my claim that if you don’t see abstractness right away then it’s [probably] not there. My opinion is that the court is on the right track here. Congress has never evidenced any real intent to limit patentable subject matter to exclude hard technology – image processing, digital communications, computer networking are right in the sweet spot of patentable subject matter these days, if you ask me, and yet we’re having to argue for basic eligibility on a daily basis for claims on this stuff. That’s just silly.

    Max, I haven’t yet seen you assert that this opinion reflects a latent desire on the part of the panel to institute a “(palpably?) susceptible to industrial application” and/or “technical effect” standard. I wouldn’t argue too vigorously if you did…

  135. Law schools really mess with a person’s writing/thinking ability, as this post aptly illustrates.

    Example 1
    “There are three articulated exceptions to the scope of patentable subject matter under 35 U.S.C. § 101: laws of nature, physical phenomena, and abstract ideas.”

    These are not “exceptions to the scope”. They are not even within the scope. And please drop the passive voice now before it destroys your career and turns you into another zombie lawyer.

    Here’s what the Court said (note active voice):
    “The Supreme Court has articulated only three exceptions to the Patent Act’s broad patent-eligibility principles: “laws of nature, physical phenomena, and abstract ideas.” Chakrabarty, 447 U.S. at 309.”

    Example 2
    “Comment: The court’s discussion of Section 101 suggests that the issue of patentable subject matter should be analyzed with respect to the patent as a whole; in contrast, Section 112 challenges are analyzed on a per-claim basis.”

    What? Where does this come from? See John’s comment above.

    Example 3
    “As the court held, although a patent challenger has the burden of coming forward with invalidating prior art, . . .”

    The Court said: “The challenger has the burden of going forward with invalidating prior art.”

    “Coming forward” means to present the PA. “Going forward” with PA means to make a prima facie case. The distinction is not subtle for the meaning of a prima facie case is a prerequisite to understanding, probably, 80% of the case law, including this case.

    Example 4
    “Note: The ‘772 and ‘305 patents shared the same specification as the earlier ‘305 and ‘228 patents.”

    Beg pardon?

    Example 5
    “Comment: A related issue is who bears the burden of establishing Section 112 patentability in the context of non-continuation claims to a pre-filing conception or reduction to practice date.”

    Please explain in what context, precisely, Section 112 relates to conception or reduction to practice? Which sub-paragraph of 112 are you referring to? i.e. what are you blathering about?

    The best thing they can teach you in law school is keep your fingers close to Ctrl-z.

    Posted by: Babel Boy | Dec 09, 2010 at 11:43 AM

  136. Thank you Pook for the patent family member at the EPO. I see that the EPO prosecution of EP-B-560872 was tortuous. The Examiners repeatedly took the view that the claims were “not clear”, because they were not reciting enough technical features adequately to define exactly that invention which the Applicant was the while asserting to be the one that would overcome the EPO’s obviousness objection. This clarity (Article 84 EPC) obstacle is an objection which (in my experience) frequently bamboozles applicants from the USA. It occurs to me now though that the fewer concrete technical features the claim recites, the more “abstract” its subject matter so that the EPO’s routine “clarity” objection might have some resonance with an abstractness objection, your side of the Atlantic.

    There were three divisionals. EP-A-746142 was abandoned but EP-B-749231 and EP-B-749232 went to issue, and nobody opposed.

    I wonder if MS infringes any claim that issued out of the EPO. I suspect not. But in any case the 20 year term for all three issued European patents run out on Dec 3, 2011.

    I have not reviewed any of the claims that issued in Europe but I very much doubt any of them includes the feature “visually pleasing”. That feature would not survive Art 84 either.

  137. Proving only that if you selectively ignore enough words in the claim, you can get what you’re looking for.

    Yes, what I’m looking for is an abstract concept. If I don’t find one, I’m done. If I do find one, I must then consider whether that’s what’s actually being claimed. Or, if you prefer, whether that’s “the general subject of the claim”.

    Yes, improving the processing of digital images is a real-world practical concern. And yet, making digital images prettier is an abstract concept. So, does the claim (without considering its scope, apparently) cover the entire abstract concept, or does it cover a practical application of that abstract concept?

    It sounds like they’re claiming a particular way of doing it, so the court was probably right to find these claims patent-eligible. I simply said that I don’t find it satisfying that they found all of the claims to cover a practical application simply because some of the claims recited the actual use of hardware or algorithms (and by implication, others did not). If they had stopped at “a particular practical method of image processing is not abstract”, I’d have been fine with that.

    Note that the court acknowledges that 112 will let you address any abstractions that are built into the claim.

    Except that it doesn’t, really. 112 lets you address potentially indefinite terms like “aesthetically pleasing”, but it’s not equipped to filter out concepts built into the claim that are abstract but not indefinite (like Diehr’s mathematical formula). Nor should it be.

  138. but we can’t know that until we identify a/the concept

    Ok, I lied. I do have more to say about that.

    I think your comment suggests the very approach that the court is trying to discourage. The court is saying that 101 analysis is not about ferreting out “the” concept of a claim. Instead, we’re simply looking for the subject matter that the claim addresses. The scope of the claim isn’t as important as the general subject of the claim.

    Most of the time, as in this claim, it’s really not that hard. Even 6 could do it, if he wanted to. An “image” is a representation of some physical phenomenon. Digital images are those representations embodied in computer data. Improving the processing of those digital images is a real-world, practical concern, quite unlike solving Fermat’s last theorem.

    What if I had said “the entire concept of making an image aesthetically pleasing”? Now, that sounds at least a little more abstract.

    Sure it does. Proving only that if you selectively ignore enough words in the claim, you can get what you’re looking for. My summary of the claim was more precise, and is not abstract, so we’re done.

    Note that the court acknowledges that 112 will let you address any abstractions that are built into the claim. But in this case, a person of ordinary skill in the art has a pretty good idea of what a “gray scale image” is, doesn’t he?

  139. As much as I like ya, HMS Boundy, ya appear to be blowin smoke here.

    From your very own link:

    Most of the U.S. federal courts of appeal have adopted a rule under which, in the event of any conflict in decisions of panels (most of the courts of appeal almost always sit in panels of three), the earlier panel decision is controlling, and a panel decision may only be overruled by the court of appeals sitting en banc (that is, all active judges of the court) or by a higher court. In these courts, the older decision remains controlling when an issue comes up the third time.

    So again, how does this panel interact with the Nuitjen panel? (outside of any Bilski reset effects, that is).

  140. Making images (aesthetically pleasing or not) is not an abstract concept.

    Perhaps not. My comment was only intended as a starting point. Of course, the “entire concept” has to be an abstract one, and this one apparently isn’t, but we can’t know that until we identify a/the concept, and it will take a lot of caselaw before we can achieve much predictability in that regard.

    I’m not entirely convinced by the court’s reasoning that none of the claims are abstract because some of the claims recite hardware like film, printers, and display devices. I don’t see why that reasoning should save the claims that don’t recite anything concrete. If anything, it should reflect negatively on them for lacking the required concreteness and not being narrowed to the practical application.

    What if I had said “the entire concept of making an image aesthetically pleasing”? Now, that sounds at least a little more abstract.

  141. ping – Also crucial — the Supreme Court’s Bilski was a big “reset” button on the whole field. The Supremes didn’t tell us much about what the law it, but they did say one thing — just about everything we thought we knew just ain’t true no more. They gave the Federal Circuit a nearly blank slate, and told them to start over. That’s another reason that Research Corp. has lots of room to limit/erode/abrogate Nuijten.

  142. Oh, and if 6 liked “relatively thin”, he’ll love “visually pleasing”. It’s the epitome of “I know it when I see it”, and I’d love to see an expert witness called solely to testify that he considers the half-toned image pretty.

    Agreed. At least at first glance, that limitation is crying out for one of those “ginormous smackdowns” we’ve heard about.

  143. I think we’re at least approaching the right question if we ask whether the half-toning claims cover the entire concept of making an aesthetically pleasing image, or whether the claimed “hardware” (the blue noise mask, I guess?) is not meaningfully limiting.

    The first part of your question will get you on the wrong track immediately, because the issue has never been whether a claim captures “the entire concept” of just anything. The question is whether the claim captures the “entire concept” of an abstraction. The court is telling you that it’s really simple here. Making images (aesthetically pleasing or not) is not an abstract concept. Since it’s not, it doesn’t matter (under 101) how much of it is covered by the claim.

    We should be more concerned with the claims that cleverly disguise an abstract concept in a maze of what appears at first glance to be specific structure.

    I agree that we should be somewhat concerned with these claims. But the MoT as applied by PTO examiners works against your concern. Under their analysis, if there’s a machine recited somewhere in the claim, you’re golden.

    The court’s “test” here is that you should simply look at what the claim is about. If it’s about manipulating numbers in a neat way, but for no particular purpose, then sure, it might well be abstract. Let’s talk. But if it’s about manipulating something real (useful, concrete, and tangible? transformation?) it’s probably not. Move on to the details of 102 et seq.

    As my hero once said, that’s all I have to say about that.

  144. ping, are you a lawyer? That’s the way common law courts work.

    In case you aren’t, a nice description of how later court decisions modify, limit, earlier decisions is at the Wikipedia article on “common law”:

    link to en.wikipedia.org

  145. It seems that In re Nuijten, 500 F.3d 1346, 84 USPQ2d 1495 (Fed. Cir. 2007) is scaled back

    Sorry Davey, how does this panel decision scale back a different panel decision? At most, you now have a split, but even that is somewhat nebulous, no?

  146. The only reason for any invention relating to “half-toning” is to deal with engineering compromises in physical devices to deal with messy departures from the natural world. I can’t see how you possibly get to “abstract” from that starting point.

    Isn’t binary-coded decimal also a human contrivance used for engineering convenience in physical devices? Isn’t all digital data, when you get right down to it?

    I think we’re at least approaching the right question if we ask whether the half-toning claims cover the entire concept of making an aesthetically pleasing image, or whether the claimed “hardware” (the blue noise mask, I guess?) is not meaningfully limiting.

    I’m not convinced that abstractness needs to instantly jump out at the reader. Those cases are easily identified anyway. We should be more concerned with the claims that cleverly disguise an abstract concept in a maze of what appears at first glance to be specific structure. I don’t know for sure that this is such a case, and the court seems to think that it isn’t, but we shouldn’t be too quick to adopt a “test” that requires not thinking about it.

    Oh, and if 6 liked “relatively thin”, he’ll love “visually pleasing”. It’s the epitome of “I know it when I see it”, and I’d love to see an expert witness called solely to testify that he considers the half-toned image pretty.

  147. This invention relates to half-toning, a printing/display method for displaying images of things that really have continuous color variation on physical devices that aren’t capable of continuous variation.

    The only reason for any invention relating to “half-toning” is to deal with engineering compromises in physical devices to deal with messy departures from the natural world. I can’t see how you possibly get to “abstract” from that starting point.

    Another crucial feature of this decision —

    Note how the court looks to the specification to evaluate “abstractness,” not just the claim. (Same thing happened in AT&T Corp. v. Excel Communications Inc., 172 F.3d 1352, 50 USPQ2d 1447 (Fed. Cir. 1999).) It seems that In re Nuijten, 500 F.3d 1346, 84 USPQ2d 1495 (Fed. Cir. 2007) is scaled back–no longer does a single atom of “abstract” claim coverage bring down the whole claim.

    Footnote: “Nuijten” is a Dutch name pronounced “nighten en” — “uij” in Dutch is like Russian deep-in-the-larynx ы or like “i” in “ill”. “j” is a vowel, not a consonant.

  148. “In other words, the defendants didn’t actually tell people what the abstract idea at issue was, and the court isn’t going to do it for them.”

    “I will say that the counsel here failed quite miserably in properly presenting their case. Although, I guess, to be fair, they didn’t have the Bilski decision in front of them for guidance. They are merely lawlyers after all, they have no idea how to apply the law on their own. And I will also say that the abstract idea analysis appears to be fairly simple to apply to this claim and that there are plenty of abstract ideas to choose from when presenting such.”

    Ok genius, tell the rest of us what “abstract idea” was preempted by these claims.

  149. Max

    The 310 patent at least has a granted EP equivalent: EP0560872. The prosecution history looks a bit bizarre but I don’t have time to delve into it.

    The granted claims look to be a bit different from the US patent, possibly more “concrete”.

  150. This must be the result of this magical mystical time of year, or maybe there is still hope for humankind.

  151. I’m not too sure about that, they certainly did not see the abstractness themselves, as they clearly note.

    The point is that if you don’t “see” the abstractness straight away, then it’s not there. Look, I know it’s a natural response to threats to your myopic, OMG-is-that-Dudas-on-the-elliptical-next-to-me?-should-I-talk-to-him?-No-I’ll-just-worship-him-from-afar-But-those-are-some-nice-pecs, worldview, but you are deluding yourself.

    The court’s point is that you don’t turn claims upside down and inside out to see if you can detect abstractness lurking in there. If the claims are directed to real-world technical problems, then they’re not abstract. Once you’ve detected a lack of abstractness, then move on to the statutes that are more amenable to formal analysis. It’s really that simple – no need for fancy tests, or multi-factor analysis. (Incidentally, the court here didn’t do a “factor” analysis. Instead, they listed several reasons why the claims weren’t abstract – any one of them would have sufficed.)

    Here, the court easily found that a process for manipulating digital image data is clearly directed to real-world technology and is not abstract. It wouldn’t have made any difference if some numbnut lawyer did a better job “pointing out” that the claims are abstract because they might conceivably be practiced in the vacuum of outer space using incorporeal processing elements and data that has been triple-randomized to avoid any chance of a connection to a real, physical, object. The court says that this is exactly the wrong approach to what is supposed to be a coarse filter.

    You may be right about not getting a memo. But I bet your friends in 2400 and 2600 get the word that it’s enough already with the incessant 101 rejections. Communications systems are not abstract, even if they might conceivably involve – horrors!- the use of software.

    The change signaled in this opinion is not earth-shattering, because the BS 101 rejections never stick anyway. But it sure will be nice when the nonsense goes away, or at least is reduced to a dull roar.

  152. Maxie,

    Ya missed the nuance.

    palpable is to tangible as functional is to useful…

    All weza need is a mention of “concrete” and we be back at State Street.

    If State Street’s “useful, concrete and tangible” was not enough for the Supremes, I don’t see how “useful and tangible” as a subset will make them happy.

    The p_ssing match between the courts continues.

  153. Comment: The court’s discussion of Section 101 suggests that the issue of patentable subject matter should be analyzed with respect to the patent as a whole; in contrast, Section 112 challenges are analyzed on a per-claim basis.

    Actually, the court quoted from Diehr:

    “In determining the eligibility of respondents’ claimed process for patent protection under section 101, their claims must be considered as a whole. It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis.” Slip Op. at 16 (bolding added by me).

    I would suggest that the issue of patent eligible subject matter is determined on a claim-by-claim basis since each claim is a separate invention. However, in doing this analysis, you read the claim “as a whole”, not element-by-element.

  154. Can anybody tell me:

    1. Can any of these US patents run beyond 20 years ie December 04, 2011?

    2. Did the inventors apply to the EPO as well? If so, did the EPO i) publish, thereby making a file history available to the public ii) search iii) examine iv) issue any patent?

    I ask because I imagine there was no problem in the EPO with patent-eligibility.

    ping, I thought that “palpable” means that you can palpate it. Can you do that, with this subject matter? Not sure that I can.

  155. “You’ve got it backwards, dude. The court looked squarely at the claims and said that they were clearly directed to a real-world problem and weren’t even close to being abstract. ”

    I’m not too sure about that, they certainly did not see the abstractness themselves, as they clearly note. But then again, as their tone clearly implies, not only did they not see it, it wasn’t pointed out for them. Time and again counsel had the opportunity to point it out for them, and time and again counsel squandered the opportunity. Arguing instead about Diehr etc. when everyone already knows about Diehr (excepting maybe Rader).

    As has become fashionable as of late, they looked to “factors”, which is clearly not the procedure under USSC precedent. Personally, I will resist the urge to engage in factorization of the abstractness inquiry until the USSC tells the rest of you that it clearly isn’t the way to go.

    “Note especially that they purposefully did not use machine-or-transformation, even as a “helpful tool.””

    They didn’t use it explicitly by name, but they certainly did use it. They reference the machines used several times.

    “I expect that you’ll be getting a memo in the next few weeks…”

    I never get those memos, nor would I read it if it was given to me save for lulz. They’ve not been on point in those memos since KSR.

    Although there is no reason for a memo, they practically followed Kappos and his team’s lead in the guidelines relying on “factors” and other such nonsense to determine abstractness when none of that is applicable in the least.

    One would think that one-sentence-analysis Rader would be the first to tell you that.

    To be sure, I wouldn’t go so far as to say that this claim(s) is abstract or unpatentable or any of that. But I will say that the counsel here failed quite miserably in properly presenting their case. Although, I guess, to be fair, they didn’t have the Bilski decision in front of them for guidance. They are merely lawlyers after all, they have no idea how to apply the law on their own. And I will also say that the abstract idea analysis appears to be fairly simple to apply to this claim and that there are plenty of abstract ideas to choose from when presenting such.

    Perhaps they can still raise 101 at the DC at trial? I would have to LOL if this goes a second time for the same claim, over 101, this time well-briefed.

  156. I was at my local Starbucks in San Diego when this barista, I couldn’t catch his name, but the initials on his badge both started with the letter “M” swooned and started shaking uncontrollably after taking a peak at some guy’s laptop.

    I was curious, so I checked out what the guy was surfing and it was this website. Anybody know what would have caused this?

  157. In other words, the defendants didn’t actually tell people what the abstract idea at issue was, and the court isn’t going to do it for them.

    You’ve got it backwards, dude. The court looked squarely at the claims and said that they were clearly directed to a real-world problem and weren’t even close to being abstract. Note especially that they purposefully did not use machine-or-transformation, even as a “helpful tool.” They also went out of their way to point out that some of the claims didn’t recite machines at all, but were still valid. I expect that you’ll be getting a memo in the next few weeks…

  158. Rader will make you lol at around 11:30.

    Coucil will make you lol at around 12:05.

    Rader will make you lose your seat around 12:10.

    Just remember boys and girls, they don’t give 2 shts about what the USSC does or says, these claims are valid.

    Plager jumps in to try to save the day around 12:20 but apparently to no avail.

    Remember this case was argued and briefed before Bilski. So perhaps that is why the defendant didn’t do a very good job.

    At 27:55 Rader starts to get incensed about what he knows very well is the thing that will turn these issues. And yet, he’s not willing, a few months later, to correctly apply the law. He is obviously too emotionally attached to patents claiming an abstract idea being patentable.

    At 30:56 you hear him again in his incesed state. I lulzed.

    Listen to 31:20. Rader: If you take the Arrhenius equation out you cannot compute rubber production.

    Attorney: If one removes the mathematical algorithm from the claims there would be nothing left.

    Rader: That would be the same of Diehr, if you take the Arrhenius equation out you cannot compute rubber production.

    Attorney: But in Diehr if you remove the algorithm from the claim you still had a physical process…

    Rader: Which couldn’t possibly work because you have to have the Arrhenius equation to calculate rubber production.

    I lulzed many times. In Diehr, see here:

    link to caselaw.lp.findlaw.com

    they never were “computing rubber production”. The were computing times to cure rubber. Which, btw, was certainly computable, and was most certainly computed regularly in industry, before the invention of Diehr’s process, it was simply difficult.

    Rader maybe should bother to read the Diehr decision sometime.

    Not to say that I agree with the “if you take out the algorithm and there is nothing left in the claim” approach as that is simply wrong.

    And then why Microsoft and other titans don’t tank software claims:

    Attorney: We like computer claims and software claims.

    Still, so far as I can see, the attorney never did bother to simply point out what abstract idea was at issue.

    Since Rader is probably reading, hi2u. Still like ya but man you need to lay off the refusal to abide by the USSC’s holdings.

  159. ““other limiting criteria that further the purposes of the Patent Act and are not inconsistent with its text.” Id. at 3231.”

    Lulz. I believe if you read that in context they’re talking about “other limiting criteria” on eligible subject matter, not on their exceptions.

    CAFC upholding USSC precedent? Like that’ll ever happen. Until the USSC expressely takes a case (maybe like this one) and explicitly reams them.

    “In that context, this court perceives nothing abstract in the subject matter of the processes claimed in the ’310 and ’228 patents.”

    In other words, the defendants didn’t actually tell people what the abstract idea at issue was, and the court isn’t going to do it for them.

    Lazy defendants mussing the lawl. Par for the course.

    “I think this case will immediately have ramifications at the USPTO. For example, I take it that the BPAI will have to stop affirming 101 rejections to claims reciting image processing with pixel modifications, like: link to des.uspto.gov
    Since that was the same issue here.”

    Idk man, the BPAI is bound by the USSC’s interpretation of the law moreso than the CAFC’s unwillingness to do a defendant’s job for him.

  160. Jason,

    That the burden of establishing an earlier priority date is with the patentee has been well-established for a couple of years. See link to patentlyo.com.

    And there is nothing controversial about putting the burden of establishing an earlier conception date on the patentee as well. After all, presumably the patent office never got to adjudge whether the invention was conceived earlier than the filing date…

  161. I think this case will immediately have ramifications at the USPTO. For example, I take it that the BPAI will have to stop affirming 101 rejections to claims reciting image processing with pixel modifications, like: link to des.uspto.gov
    Since that was the same issue here.

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