VS Tech v. Twitter: Patentable Subject Matter

VS Tech v. Twitter, 11–cv-0043 (E.D. Virginia 2011)

Trial is set for this week in the patent infringement lawsuit between VS Tech and Twitter.  VS’s asserted U.S. Patent No. 6,408,309 claims a “method of creating an interactive virtual community of people in a field of endeavor” and has a February 2000 filing date.  The inventor is Dinesh Agarwal who has also been a patent attorney since 1985.  VS Tech was formed to pursue the lawsuit and is headquartered in Mr. Agarwal’s law office address. The first two claims of the patent are reproduced below:

What is claimed is:

1. A method of creating an interactive virtual community of people in a field of endeavor, comprising the steps of:
a) selecting a field of endeavor;
b) compiling a list of members in the selected field;
c) selecting a member from the compiled list of members based on a preselected factor;
d) obtaining biographical information about the selected member;
e) processing the biographical information in a preselected format to create a personal profile of the selected member;
f) publishing the profile of the selected member on a machine readable media; and
g) allowing the selected member to interact with the profile.

2. The method of claim 1, wherein the step (f) comprises publishing the profile of the selected member on a network of computers.

In his most recent judgment in the case, Judge Morgan denied Twitter’s motion for summary judgment of invalidity under 35 U.S.C. 101, 102 & 103 and non-infringement.

The section 101 decision is interesting in that the judge treated the machine-or-transformation test as a question of fact to be determined by the jury.  “In light of all of the foregoing considerations, the Court finds that the evidence is sufficient for a reasonable juror to conclude that the ‘309 patent is linked to a particular machine or apparatus.”  Like claim construction and obviousness, patentable subject matter is treated by the courts as a question of law. However, unlike claim construction, the appellate courts have never held that it must be the judge who decides section 101 issues.

When the case was filed in January, Patent Law reporter Joe Mullin wrote “The central role of patent lawyers in suits like this raises questions about the health of the U.S. patent system. Patent lawyers are insiders in this system, and an increasing number of them aren’t satisfied just with being very-expensive service providers to patent owners. They’re seeing the millions made by so-called patent trolls and are eager to get into the game themselves. The patent office simply isn’t set up to say no to a persistent applicant, and the patent lawyers know that as well as anybody.  Mike Masnick filed his story under the “bang-head-slowly dept.”

The following is the text of Twitter’s proposed jury instructions on what it terms “unpatentable subject matter”:

Even if an invention is both new and not obvious, a patent claim may be invalid if its subject matter is not patentable. The law establishes three categories that are not eligible for patents: laws of nature, physical phenomena, and abstract ideas.

Twitter contends that the asserted claims of the ‘309 patent claim an unpatentable abstract idea. Methods which can be performed mentally, or which are the equivalent of human mental work, are abstract ideas which cannot be patented. An abstract idea is unpatentable even if the patent claim limits the idea’s use to a particular technological environment, or adds insignificant post-solution activity. Systems that depend for their operation on human intelligence alone cannot be patented.

A useful and important clue for determining whether a patent claims unpatentable subject matter is whether the claim is tied to a particular machine or apparatus, or transforms a particular article into a different state or thing. This is called the “machine or transformation test.” To satisfy the machine prong of this test, the use of the machine must also impose meaningful limits on the claim’s scope. If the claim does not satisfy the machine-or-transformation test, this indicates that the claim may be invalid because it claims unpatentable subject matter.

 

 

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

461 thoughts on “VS Tech v. Twitter: Patentable Subject Matter

  1. ” I interpret interacting as something other than reading.”

    Such as… two friends that both read the magazine to talk about it? I’m pretty sure they’re “allowed” by the magazine company to do that.

  2. I’ll take that dare:

    “The U.S. Supreme Court, however, rejected the finding that a machine or transformation was a condition of patentability. The Court said that while the machine or transformation test was a “useful and important clue, an investigative tool, for determining whether some claimed inventions are process,” it was not a condition of or “sole test” for determining patentability.

    The Court acknowledged that the machine or transformation test was effective for evaluating process patents in the “Industrial Age” (quoting the Court’s opinion), but that there were “reasons to doubt” the test for “determining the patentability of inventions in the Information Age.” The court acknowledged that technological innovations such as “linear programming, data compression, and the manipulation of digital signals” required looking beyond the machine or transformation test to determine patentability.

    The Court also specifically acknowledged the viability of business method patents under certain circumstances. On narrow grounds, the court noted that section 273 of the Patent Act talks about “methods of doing or conducting business” as part of a defense to patent infringement. The Court concluded that using this language, patent law acknowledges that business method patents must, “at least in some circumstances” be eligible for patent protection.”

    link to newsbreaks.infotoday.com

  3. Worth repeating and asking MM and Ned – Can you you do this?

    Straight up and without games, can you repeat after me and stop the madness:

    BMPs are an eligible class of patent subject matter and whether any particular claim passes 101 must be taken on the merits of that individual claim.

    Can you do it? Can you give answers? After all, we are entitled to answers, aren’t we? (and the truth would be nice)

    MM reprises the Col. Jessup role:
    link to hark.com

    He just doesn’t get that the manner provided actually does matter.

  4. Ned, I’m just riding my hobby horse regarding the “substantial utility” requirement.

    My hobby horse is, again, that the “substantial” requirement refers to a required tangibility or corporeality, not merely to a required non-triviality because, among other reasons, the assessment of non-triviality requires subjective considerations.

    Yes, of course I KNOW that this view does not comport exactly with precedent–nor does my view that the preamble should always be considered limiting–but these views are part of a coherent system of interpretation of the patent laws, one that is, IMHO, vastly superior to the existing one that was created by the courts and PTO bureaucracy.

    I’m just going to keep riding it, under the theory that if people hear it enough times, it begins to be perceived as truth.

  5. Well, if the list was tangible it would qualify as an article of manufacture–however, the eligibility under 101 would depend upon the statement of utility.

    Can you provide a statement of the utility you contemplate for the list?

  6. Carry on.

    Carry on indeed. That is what Shillers do. Do you really expect anything else?

  7. Suddenly ends? Shrug…i think “interacts” implies a bidirectional exchange…reading is part of interaction..but i dont think reading alone is sufficient…. If I were just reading your comments without replying, would we be interacting?

    I think not.

  8. Yes that is my position. That is only one reason Benson makes no sense…see my miss addressed reply to Answers above…

  9. Ned,

    I think a problem with the Government brief is that applied math does not have to be applied to physical objects to actually still be real applied math.

    The government fought (for various reasons – and not all of them ultruistic ones) for a very long time to deny patents to encryption technology.

    Yet to deny that encryption technology is the stuff that patents were meant to protect steps off the stage of objective rationality. There is no credibility to be had by taking any opposing position.

    It is one thing to recognize and then make a clear conscious decision and say, that for policy reasons, we want to carve out such a subject area from patent eligibility. It is quite another to attempt to somehow cloak such patent eligible items in some “Law of Nature” of “Abstract” cloth. To somehow shoehorn what is clearly man-made applied math to be some basic general math that it just is not.

    Until you realize the philosophical result driven nature of such actions, you will not be able to see why most people view Benson as an abomination of a decision, that most people rejoice at what happened to Benson in Diehr as confirmed in Bilski.

    Yes, I realize this is very much an idealogical battle and that a straight-forward, simple and honest statement of the arena and the “game” most likely will not be forthcoming for the simple reason that such a statement admits the game being played, and admits that philosophy indeed is the sole driver and that the plain and simple facts and law are just in the way of that philosophy.

    But to close your eyes and pretend that such is not the case is rather trying to fight with your eyes closed. Yes, in your mind you can play all types of games to convince yourself that you are winning, but when a punch like Ultramercial hits you squarely on the jaw, and you are laying in the middle of the ring, those cute games you play in your mind will not stop the count to ten.

    You will need to try to get up and try to box in a different manner. All I am telling you is to open your eyes if you want to be effective in this philosophical battle. Keeping your eyes closed and pretending is not doing you very well.

  10. What you wrote, MM, is your typical “Do as I say now and agree with me or else you are a troll and a sockie and I am always right” type of BS.

    You demand answers instead of replying to someone who has asked simple questions. Is the ability to provide direct ans simple answers beyond you?

    When that person calls you out for your insults, you reply “Ha – you are acting just like I predicted and therefore you are officially a less than human thing and I do not have to answer your questions.

    You still have not answered the questions.

    And much like the thread with the table-pounding identifier question, you do not even realize that the coward trap has been sprung on you. You blithely and arrogantly walk straight into the trap and then wonder why you are in a cage, boxed in by your own smarmy pride, crying that you are being picked on.

    Boo-Fn-Hoo.

    Let’s see some real game-free answers from you today, Malcolm. Real, straight forward, simple and game free answers are the key to the trap you have oh-so-willingly walked into. Can you free yourself?

    Are you up to it?

  11. Ned,

    Do you think it is unethical to purposefully mischaracterize what another poster has said?

    Do you think that when Bottom Line says “I don’t have to give you a single example” that this means the same as “I cannot give you a single example?”

    have to” and “can” have a very real difference as I read the comment.

    I am puzzled as to how you can think such a shift, such a restatement is anything but a parlor game. Are you not above such games?

    As for anyone having to prove themselves to you in regards to their knowing what they are talking about (your comment of “Your job is to provide us with some evidence that you actually know what you are talking about“), you have not shown that you know what you are talking about.

    You are setting up a false test that only those that believe your version of reality, your version of the facts and your version of the law gain entrance. You have created a job that no sane man or woman would knowingly want.

    Good luck with that. Your recruitment efforts are sure to gather those already firmly entrenched in your belief system. Those employees will no doubt never question you and will always goosestep to want you say is the “truth” (even as that “truth” has been exposed for a l_ie).

    It’s a nice game to define the rules of your club like that. The rest of us will inhabit the real world where a programmed machine is in fact different from an unprogrammed machine, the real world that requires that if you want that new aspect of the programmed machine, you must actually change the machine to actually be able to have that new aspect, instead of waiting around for the Turing-complete Genie within the machine to somehow magically change itself.

  12. MM, you appear to have gotten meaner over the years. If you drink, I recommend you stop.

    6, good job on improving your writing skills and analytical skills. You have a long way to go, and you need to strive for knowledge not power, but good job.

    IANAE, you haven’t changed.

    Ned, you have too good a mind to waste on shilling this 101 nonsense. Get with the program.

  13. Ned,

    How do you handle Ultramercial, given your statement here?

    Do you distinguish on the definition of “abstract” (something yet to be actually given, other thanthe famous pornography, I-know-it-when-I-see-it free for all)? It seems a bit difficult to maintain a sense of “abstract” if you are willing to concede that “the method and means were clearly described and even if they involved physical machines and processes” It seems such a concession – by its very nature – means the claim cannot be abstract.

    Or do you simply ignore the law on (your) principle (and push your agenda of slipping into Bilski the Alappat over-ruling that never happened)?

    Can we get a cogent answer, or will we get a blanket denial bordering on a character attack that Ultramercial should never have happened?

  14. What rule or law of nature is captured here? That is what you have to assert as outlined by the SCOTUS in Bilski. So, boys, if you want to say it is abstract you need to come up with some psychotically generated rule or natural law, which you have not.

    Also, boys, you haven’t answered the EE patent question. Shouldn’t we now remove all ee patents according to you? A/D converters, sensors, and general purpose computer can be used to similuate almost any ee circuit, so they are all abstract.

    Information takes time, space, and energy to transform. Represented information is like the grains of wheat in Deener.

  15. autofellations of a hypocritical dxpshxt, then I expect only more restroom stall scribblings from you.

    Easily one of the most self-describing statements being projected onto others this thread has ever seen.

    Aside from the longer and more robust rant by the same person, that is.

    How very sad.

    And likely to produce yet another flacid “ha you must be a troll, you are picking on me, stop picking on me or I’m going to cry” typical response.

    It’s almost enough to stop picking on poor MM out of pity, out of the humanity of it all.

    Almost. Then you realize the arrogant pr1ck actually believes in his own self-delusions and the continued azz-kickings are justly deserved.

    Well, let’s see if he can live up to the “bravery” standard he has supposedly bought into on this thread and answer some of the “simple” questions, and maybe (just maybe, but I advise against holding your breath) maybe affirm the clear and game-free pronouncement on BMPs.

    (just between you and me, I don’t think he is up to it)

  16. A “simple” question such as this is guaranteed a non-answer from the bully who demands instant answers to his questions, which questions typically are of the loaded “admit you are wrong or admit that you are incapable of understanding how great I am or else you are a Troll” type – (shudder).

    Perhaps someone who knows Malcolm can tell him just how pathetic his posts make him to be.

  17. I think that when you force a 101 discussion and must rely on the MM-Ned to anchor one side of that discussion, the likelihood of a trainwreck is a near certainty.

    A massive trainwreck with the shear number of posts, no doubt (which must be a bittersweat payback for Prof. Crouch). Yet another gory azz-kicking for the anti-patent crowd. That’s three multi-hundred thread azz-kickings in a row.

    Ouch

    One wonders though if the good professor would have an ulterior reward in quietly issuing a strong admonition against either MM or Ned agreeing with the (brave?) direct and uncluttered game-free pronouncements about BMPs. If indeed (as it appears to MM), Ned all along has merely been saying what MM thinks, then the two will readily affirm the statements and the multi-hundred threads can slim down.

    But such clarity and directness is just not likely to happen. Not even your smarter than the average bear can force those so infused with Game to be simple and straightforward, much less be able to prevent backsliding into making things up out of whole cloth in order to cover the paper thin table, worn down by the viscious poundings it (and their proponents) have received.

    Carry on.

  18. “BMPs may be eligible for patenting provided such claims pass the MOT test that we have approved of for 150 years or some other test (other than the Alappat test) that has yet to be developed.”

    Wrong

    “BMPs may be eligible for patenting provided such claims like all process claims are an application of a law of nature or mathematical formula to a known structure or process. (Diehr)

    Specific applications or improvements to technologies in the marketplace. (Research Corp)

    An application of an abstract idea.
    ( Ultramercial) Citing Diehr, 450 U.S. at 187 (“an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection”)

    ::FIXED::

  19. “This is a BMP. It is patent eligible because Bilski held BMPs were patent eligible.

    Wrong

    This is a process claim.

    It is patent eligible because it’s a process, U.S.C. Title 35 101, subject to the conditions and requirements of this title.

    Bilski “Upheld” BMPs were patent eligible.

    ::FIXED::

  20. “If it is your contention that a claim may fail the MOT and still not be abstract, I would expect that you could at least provide us one example.”

    Morse’s Claim 5

    The system of signs, consisting of dots and spaces, and horizontal lines, for numerals, letters, words, or sentences, substantially as herein set forth and illustrated, for telegraphic purposes.

    ::DONE::

  21. >>It is not clear that the calculation on one number >>from another number per se can affect entropy at all

    Oh yes, this is chrystal clear. And if you were an engineer you know that. Entropy is not changed in one case when you know what is represented in the computer memory is some phyisical object and not in another case because the computer memory is representing a financial transaction. Entropy is changed just the same and your view of what the represented information is does not change that.

    With each of your posts Ned you prove yourself more and more a shill.

  22. Shame. Just when our discussion was developing nicely, it suddenly ends. I was wondering whether a machine “interacts” with a profile when it “reads” that profile.

  23. “The case is meant to suggest that any claim that has an abstract output is unpatentable, not just claims that have risk as an abstract output.”

    Wrong

    .. the Court artificially limits petitioners’ claims to hedging, and then concludes that hedging is an abstract idea rather than a term that describes a category of processes including petitioners’ claims. ( Bilski )

    ::FIXED::

  24. Yes, thats one reason. Another is the nonsene about blocking others from any use…duh, thats what patents do!…the ruling says if you invent something of no consequence you can get a patent….but if you invent something as earth shattering as a bcd to decimal converter, you dont deserve a patent….nonsense

  25. “Now you may disagree that you did not prove your point that BMPs are expressly authorized by the case law, by Congress or by the Constitution,”

    All patents are expressly authorized by the Statute and the US Constitution.

    :: Fixed::

  26. “Oversight, all I asked was something to support your assertion. I knew you had nothing. ”

    Article. I. Section 8 of the Constitution and U.S.C. Title 35 Sec. 101 is something more than nothing.

    ::Checked::

  27. Many of us here understand the so-called ‘Written Matter Doctrine’

    LOLZ!

    Coming from the same MM that NAL chased up the hill on this very topic?

    She utterly destroyed you on this topic, left you whimpering and exclaiming “Written Matter Doctrine? what’s that? I don’t know what you mean.”

    Every four to five months after you thought it was safe to come back out with your a_ssinine Cookbook examples, she would do it all over again. It was like Whack-a-MM.

    She was relentless at whipping you to a pulp. She also chased you down with your sockpuppets, even if you did cry to Dennis about how only Dennis knows and Dennis should check ISP addresses – which you have again resurrected (like changing an ISP address is even remotely difficult). She provided word by word, “theory” by “theory” comparisons of “sockies” all saying the same things, each with the exact same idiosyncratic words, phrases and positions.

    Now to see you post your “superior knowledge of the doctrine – you are a fricken tool. If there ever was a way for you to lower your credibility, you have just done it.

  28. How many dimensions are there in your time space?

    3, 4, 9, 13, 17, 23, 29, 1?

    I have heard ardent and sincere believers expound for each of these.

    I cannot find anyone who knows, much less agrees to what the “real” number actually is.

    Even my numbers, albeit on a different topic, may have been “off.”

    And Ned, what about the example given above? What about encryption protocols? Are you still trying to say that encryption protocols somehow do not perform real data transformations?

  29. I do as I please, when I please and I don’t answer to anyone, least of all to a schmuck like you.

    From a long list of excellent quotes, and excellent posts – quote and post of the day.

  30. That is the singlest most saddest thing I have ever read.

    Seriously. I weep rivers.

    There must be some redeeming caveat – some hook to this cruel game…

    I got it!

    Malcolm has never spoken on patent issues! (at least substantively)

    That’s it!

    So that makes it more like Malcolm is right 0.0000000000000000000000000000000000000000000000000000000000000000000000000000000000000000000000000000000000000000000000000000000000000000000000000000000000000000001% of the time he actually posts.

    Whew. Man, Ned, please don’t shock me like that.

  31. Ned,

    But that is exactly what your post suggests: that some types of abstract ideas are patent eligible while others are not.

    That is not at all what the post suggests. That is not at all what anyone has ever ever suggested.

    You are conflating your particular wretched definition of BMP – which to you MUST mean “an abstract method” and ONLY mean “an abtract method.”

    You have fraudulantly equated ALL BMPs with the singular example.

    It has been clearly, politefully, repeatedly, explained to you that you cannot do this, that there are many BMPs and each must be lloked at on their own to determine whether that particular BMP passes 101. JUST LIKE ANY OTHER (__fill in the blank___) MP, be it MPs for pharmeceutical creation, or anything on the long list that finally made MM see some light (granted, MM has a tendency to shadow over pretty quickly…)

    The only possible way you do not see this is if you are clenching your eyes tight and trying not to see it.

    I have a headache from your clenching your eyes so tight!

  32. I wonder, is money a useful article of commerce?

    I certainly find it very useful. So do my Congressmen!

  33. I am so choked up, I broke a tag.

    please, please Mr. Magic Wand Waver, fix my broken tag and give Ned the courage to at last simply and unequivically state:

    BMPs are an eligible class of patent subject matter and whether any particular claim passes 101 must be taken on the merits of that individual claim.

    I will never never never break another tag under this sockpuppet name.

  34. It is patent eligible because Bilski held BMPs were patent eligible. Let’s move on to 102/103/112.

    Close Ned, but a nuance off. A small but oh so critical nuance off.

    All that anyone has ever said was to give peace a chance. No wait, someone else said that.

    All that anyone has ever said was to treat BMPs just like you treat any other category of subject matter. Do not come out with some craziness that because the Bilski claim (singular example) was found to be not patent eligible, then all BMPs must also be not patent elgible.

    The Bilski case does hold for that proposition.

    Now if you ever manned up and answered the question put to you long ago (the Bilski 11 question – I know there have been so many left unanswered), you would recognize exactly what the majority in Bilski said, and we would have saved literally thousands of posts. Oops, I wasn’t going to draw any conclusion about your bravery (I am so sorry).

    Straight up and without games, can you repeat after me and stop the madness:

    BMPs are an eligible class of patent subject matter and whether any particular claim passes 101 must be taken on the merits of that individual claim.

    Can you do this Ned?

    No games, no added caveats – as none are needed – the truth of the statement is in the statement itself. This is it, your big moment, your moment of truth, can you do it?

    And I can be kind in return: Thank you for sharing what a minority of two thought onthe subject. How I wish that more of the other Supreme Court Justices cared enough to agree and sign up to that opinion. If only enough did so, it would have made that thought into the majority decision, and we could rejoice with the force of law that such would bring. I share your sadness that it just did not happen.

    I also share your sadness that the majority did not say “(other than the Alappat test).” I am truly shocked and oh so disappointed that quite literally, “Alappat” is not mentioned even once in “Bilski,” not even in the very long Stevens’ dissent, oops, sorry, concurrence.

    Not once.

    So I guess that when the CAFC has done what the Supreme Court asked of it in Bilski and reestablished the 101 jurisprudence, the fact that they have done so with Alappat hurts me deeply as well.

    Anyone have a box of tissues they can share?

  35. Oversight, let me elaborate just a bit. There is no suggestion in Bilski, that I can recall, that suggested the reason the claims in that case were held ineligible was because they were a directed to “kind” of abstract idea as opposed to being an abstract idea. But that is exactly what your post suggests: that some types of abstract ideas are patent eligible while others are not.

    The claims in Biksi had as an output an abstract concept, in this case risk. The case is meant to suggest that any claim that has an abstract output is unpatentable, not just claims that have risk as an abstract output.

  36. appearing to reject the idea that merely because one could identify a process as belonging to a “category” of subject matter, that didn’t mean that the process was per se eligible. I agree with Ned, in that respect.

    If Ned had ever come close to saying that, he would not have been fighting so hard for so long to not answer the questions that have plagued thread after thread. (Questions he still has not answered, but I am not going to jump to any conclusion about Ned’s bravery on that accord).

    Wasn’t it Sotomeyer that said, no matter how hard I squint I cannot make out that? MM, in order to bravely complete that legal thought you started, you need to actually complete the thought – repeat after me:

    I do recall Ned accepting the FACT that BMPs are a patent eligible class and just because one process that may be identified with that class (Bilski has been ruled ineligible, that the category as a whole has not been ruled per se ineligible.

    If Ned ever actually appeared to say such, then your agreeing with Ned will be a cause for quite some jubilation.

    How about MM, up for the challenge? How about you say it straight up and with no games. Maybe Ned will be encourged, as you appear to be his hero, and if you can say it straight up with no games, maybe finally Ned will say it as well.

    Mind you this should be a walk in the park for you. After all, I am not asking you to say anthing crazy like all purely mental methods are patent eligible, just like I would’nt ask you to say anything crazy like all pharmeceutical making methods are patent eligible because that craziness is the way of the “categorically” trap, and we just got finished with you agreeing with me that such “categorically” nonsense is a game we are not going to play.

  37. What I mean by real is that they are present in time space.  A change in something real changes time space in some way, changing the entropy of the universe.

    It is not clear that the calculation on one number from another number per se can affect entropy at all, unless the number is measured from time space and the resultant number is used to affect something in time space.  Just for example, compressing a stream of data on a communications link clearly reduces the energy to transmit the data on the link.  Thus, compression algorithms are patentable if they are claimed as processes that include transmitting the compressed data on a communications link.

    Now as we move from pure data in, data out to
    business, the issues become a little more complicated.  Reducing financial risk by hedging contracts ala Bilski might have some affect on reality, but how is not so clear.  Do you see my point?  

    Risk, the output of the Bilski method, is abstract.  It is not real.

  38. Actually, I don’t

    Is anyone surprised? Ned, you need to actually open up your eyes if you want to see.

    But given that quite literally thousands of posts have been made attempting to get you to do that very simple thing, what are the chances that this particular post would do the trick?

  39. Please take your time in explaining to Ned (feel free to use the hearing impaired caption technique) that his one BMP has been ruled patent ineligible means all BMP’s must be patent ineligible standard is out the window.

    I don’t recall Ned ever saying any such thing. I do recall him appearing to reject the idea that merely because one could identify a process as belonging to a “category” of subject matter, that didn’t mean that the process was per se eligible. I agree with Ned, in that respect.

    treat BMP’s just like you would treat any other category of method patents

    Right. Like the category of “purely mental methods” that every Supreme Court Justice agrees are not eligible for patenting, and which are certainly encompassed by the all-consuming phrase “ETC ETC ETC”. Sure, I’ll treat ’em like that if you want me to, sockie!

    LOL.

  40. Perhaps its just an oversight, Oversight, (get it?) but you needed to qualify the example provided as a working, valid example.

    If you just ask for any old type of example, you might be given a decrepit, l_ie of an example, trying to masquerade as something that be taken seriously.

    While MM is only too happy to give such (in abundance), the thread has seen enough of those.

  41. Listen Bottom line, I do not fault you for not being able to provide an example.  There are none and neither will there ever be one.  The Supreme Court is simply very reluctant to provide categorical exclusions when they are not completely sure, as is the case here.  

  42. Oh, I am just too impatient for IANAE to bite and then give my puchline.

    If there is no functional relationship with the computer, then the “passive” media would not be able to effect any change and no computer would ever work. All loading of software is done with some sort of this so-called “passive” media. Amazing it is then, how real changes still manage to happen with this “passive” media.

    Don’t you just love that transitive property? Which, after all, is just merely a type of functional relationship.

    Anyone up for another Merry-Go-Round ride?

  43. I think Benson makes sense, but that the reasoning of Bilski does not.  I have explained to you why I think Bilski makes no sense.  I assume, and you can correct me if I am wrong, that your position on Benson is as you stated:  That the transformation of data bits from one state to another is sufficient for 101 purposes and that is why Benson makes no sense.

  44. Let us say, for the sake of argument, that War and Peace had no functional relationship to the claims at issue.  Could they be given weight when considering 102/103?

  45. At least it makes more sense if you just remember what happened to Benson in Diehr as stated in Bilski

    Just saying, not like this has been a question put to anyone to answer, or anything like that…

    Perhaps the great Diehr authority MM can answer this question. How about it, MM, up to answer a question? You are not scared are you? How does Diehr change Benson as confirmed in Bilski?

    Ooooooh, I just can’t wait for this very brave answer!

  46. A better way, yes.

    They say, “This is a BMP. It is patent eligible because Bilski held BMPs were patent eligible. Let’s move on to 102/103/112.”

    No matter how many time I confront this argument with the observation that the BMP claims at issue in Bilski were held to be patent ineligible and that for this reason their statement is flat out wrong, they refuse to budge from it.

    Look, I will be generous here and fix their statement to align with the Supreme Court’s holding:

    “BMPs may be eligible for patenting provided such claims pass the MOT test that we have approved of for 150 years or some other test (other than the Alappat test) that has yet to be developed.”

    But, the Justices are not sanguine about the ability to develop such a test. Breyer and Scalia wrote,

    “[I]n reemphasizing that the “machine-or-transformation” test is not necessarily the sole test of patentability, the Court intends neither to de-emphasize the test’s usefulness nor to suggest that many patentable processes lie beyond its reach.” 130 S.Ct. 3218, 3259 (2010)

  47. Oh, anti-patent sockie. You aren’t even intelligent enough to understand that “ETC ETC ETC” includes ineligible methods in ANY PARTICULAR ART UNIT, WHICH IS THE ENTIRE POINT OF MY POST.

    Or is your position, sockie, that every claimed process is eligible subject matter

    Quite the reverese – that there simply is NO categorical exclusion of eligible subject matter for ANY category of process, be it a BMP or any other process I listed.

    Thanks for proving my point. Thanks for playing.

    Please take your time in explaining to Ned (feel free to use the hearing impaired caption technique) that his one BMP has been ruled patent ineligible means all BMP’s must be patent ineligible standard is out the window.

    I know so sad, I am so verklempt. Pass me a tissue please

    and treat BMP’s just like you would treat any other category of method patents.

  48. Monkey

    Monkey? Are you allowed to say Monkey?

    Where are the blog police before MM wets himself?

  49. I’m surprised Twitter didn’t make additional non-infringement arguments. Namely, steps (a) and (b):

    a) selecting a field of endeavor;
    b) compiling a list of members in the selected field

    I’ve used twitter and don’t recall seeing anything like (a) and (b), although I haven’t read the patent.

  50. Above a question was put to MM, who has not answered (draw your own conclusions).

    Reprinted here for your ease of enjoyment:

    MM said in reply to Les…
    The claims says nothing of paper. It says machine readable media.

    Paper is machine-readable media, Les.

    Welcome to the 20th century. That’s right. The 20th century.
    Reply Oct 27, 2011 at 12:26 PM

    Help Me said in reply to MM…
    “Paper is machine-readable, Les”

    That would be indicative of a functional relationship, wouldn’t it?

  51. Well then, you obviously fail the (c’mon you’all are intelligent) part

    Oh, sockie. You aren’t even intelligent enough to understand that “ETC ETC ETC” includes ineligible methods. Certainly some business methods are just as ineligible as those methods (indeed, some business methods fall within those classes of ineligible methods and are ineligible per se). Or is your position, sockie, that every claimed process is eligible subject matter? … because you believe it to be so?

    Here’s a kleenex, sockie. Your crying is about to begin … again.

  52. Oversight, I believe the brief did say that a process claim’s steps have to exist in the physical world. This clearly implies that mental steps can be ignored. But they did provide a caveat that mental steps that modified physical steps can be given weight. See below.

    From the brief, at 28,

    “To be patentable over the prior art, a process claim must recite a series of steps in the physical world that differs from any series of steps that was previously known.”

    FN. 8, “This does not mean that every process claim that recites a mental step is unpatentable. Claims that recite concrete processes with a “decision tree” structure (e.g., “Perform steps A and B, and then do
    either C or D, depending on the results of A and B.”) are both common and acceptable. In that sort of process, the mental step affects the physical steps to be performed. But the mere recitation of a mental
    inference at the end of a claimed process—in effect, a guide to interpreting the results—does not distinguish the process from the prior art.”

    Like the boiling egg example, the decision to pull the egg from the boiling water may be based on a mental step because the physical step is modified by the mental step.

  53. a real transformation in data occurs when the data source or data output, or both, are real

    What does it mean to say that the data source is not real?

    What does it mean to say that the data output is not real?

    Real what? A real data source? A real data output?

    This is actually not an outrageous putdown. A real transformation of data is merely a transformation of “real” data. “Real” data can be data about “real” things, but it can also be data about completely imaginary things (like the legal content of MM postings – who will no doubt quip quite brainlessly that these are not the stuff patents are for).

    For example, no one in their right mind would claim that the very real data transformations that allow real commerce to happen over the internet with selected encryption protocols are not in fact real transformations (and to think that one offshoot if this were in fact not the case, is that this blog would not exist – then where would allof us be?). Yet the inputs to those very real data transformations, such as keys, passwords and user ID’s may not be real in the sense that Ned would indicate. Clearly, the inputs being “real” do not (or more correctly, may not) matter to the very real data transformations.

  54. “OK, then. please give me the quote from the
    Constitution. I assume we agree that we are talking about the U.S. Constitution.”

    “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries” Article. I. Section 8

    “Whoever invents or discovers any new and useful process, machine,
    manufacture, or composition of matter, or any new and useful
    improvement thereof, may obtain a patent therefor, subject to the
    conditions and requirements of this title.” U.S.C. Title 35 Sec. 101

    ::DONE::

  55. And I can assure you that at least one satisfies your, no wait, IANAE’s fallacious request.

    The bottom line is no one has to give you even a single one – because the law says what it says regardless of anyone giving you even a single one.

    Now you understanding that this is so may be another question.

    But if you don’t understand that, then even anyone giving you your single example will not likely satisfy your blind disregard for what the law is.

  56. Oh!!! Yo, Ned!! Go!!!

    Finally someone with the diameter to say it the way it is. When I retire, I’m sending all my clients to you. Both of them.

    (Uh . . . please don’t forget Pasquale J. Federico, who was equally responsible for that scrwup we call the Patent Act of 1952, now amplified by the scrwup we call the Leahy-Smith America Invents Act of 2011.)

  57. Easy mo fin’ peasy. Enact it and see this sht go away.

    Close the doors and watch all those claims go away.

    That would be quite easy. But that does not address just who is falling down on the job does it?

  58. There are many things wrong with Benson. Thats just one of them. Im here to till you that court decisions are inconsistent and contradictory. Didnt you just agree with me that the SCOTUS Bilski decison doesnt make sense? Benson makes even less sense.

  59. who somehow only manages to find fault with my arguments and never with those of

    Well, can you blame him? Yours are so easy to see and so plentiful. They are there every time you post!

  60. IBP, your not processing this whole thing. Snort something and try again.

    The “allowing” is not a “limitation” at all. It is an element — a step — a gerund, as OSC points out.

    Limitations are adjectives or adverbs. A limitation tells you something about the element it modifies. “Allowing” is not modifying anything because it is an elemental step of the claimed process.

  61. Not so fast – there may be a functional relationship with one or more of those steps and the explicit book War and Peace. It may not be substantially irrelevant at all. Limited, maybe. But not irrelevant.

    You need to be a bit more explicit about what those steps are.

  62. I don’t think he did – he is missing the point that if there is no functional relationship, then the printed matter can have no functional relationship with the computer.

    I think it’s called the transitive property (you have to put these things in simple math terms).

  63. Davis, you obviously don’t understand grammar sufficiently to appreciate that distinguishing restrictive from nonrestrictive clauses is a linguistic imperative. It is not “fiction.”

    ” . . . are abstract ideas that cannot be patented.”

    is a totally different thought from:

    ” . . . are abstract ideas, which cannot be patented.”

    The grammatical Genghis Kahn that drafted Twitter’s jury instruction actually said:

    ” . . . are abstract ideas which cannot be patented.”

    Consequently, one can’t determine which meaning was intended. (In this example, the flaw is more in the missing comma — the choice of “which” was correct, assuming he/she was pointing out the legal rule that no abstract idea can be patented.)

    But your position that the restrictive/ nonrestrictive distinction is “fiction” is laughable. It’s also dangerous to your clients’ interests.

    Davis’ clients, please take note.

  64. with the substrate the matter is printed on

    Except that added item isn’t what the exception says.

    But then again, you knew that.

  65. “They say that BMPs are not categorically excluded, and in same breath, exclude them nevertheless by declaring the claims at bar, which were classic BMPs, to be patent ineligible. ”

    Wrong.

    The Court excluded one particular method of Hedging.

    Hedging is not representative of all BMPs.

    Therefore the Court did not exclude BMPs.

    ::FIXED::

  66. Or would you just like to continue trolling?

    Dammit Gumbie, that’s MM’s job.

  67. Maybe you don’t listen so well, MM –

    I’m a great listener, sockie. I know exactly what PP said. I also know he’s full of xhxt and he’s incapable of doing what he claimed, at least not under his PP pseudonym. Hence my reply to PP. Keep trollin’, sockie. Maybe you and PP can be friends someday and share the cheetoh bag together at the magical blog comments section of your dreams. Wouldn’t that be special?

  68. Well then, you obviously fail the (c’mon you’all are intelligent) part.

    No, thank you for playing anti-patent txxbagging sockie.

  69. Too Easy, “fail the MOT and not be abstract?” I am sure your reference to Tuesday and MM suggest that he believes that the patents that issue on Tuesday are not abstract, at least not the ones directed to business methods. However, I can assure you that Malcolm believes the opposite.

  70. meaning a process or method of making pharmeceuticals, are patent eligible, leaving only the questions of 102/103/112…

    Do you mean like that type of question?

  71. I think PP likes to piss on little targets. He pissed all over you.

    This is of course different than liking little PP’s. MM has that market cornered.

  72. Your job is to provide us with some evidence that you actually know what you are talking about.  If it is your contention that a claim may fail the MOT and still not be abstract, I would expect that you could at least provide us one example.  But since you cannot, then either such is not possible, or your contention that it is possible is incredible.

  73. sockie: Maybe if you actually supplied a valid legal argument you could end your dealings.

    Oh, look it’s the “Valid Legal Argument” Concern Troll again who somehow only manages to find fault with my arguments and never with those of the Quinn-lovin’ pxtxnt txxbxgger ignorati.

    In fact, sockie, I’ve posted numerous “valid legal arguments” in this thread already, including one of the first comments to thread, i.e., my October 26 12:54 pm argument about the obviousness of the claim. Tell me why you think it’s not a “valid” argument, sockie. Better yet, ask your Dear Leader Senor Quinn what he thinks about it. Be sure to tell him that MM sent you, and be sure to tell him that you were trollin’ here with your name-callin’ bxllxhxt sockie.

  74. Maybe you don’t listen so well, MM – PP just finished saying he doesn’t play your game by your edicts.

    Are your ears full of wax, or something else?

  75. Les, I would just like to reiterate that if claim elements have no function relationship to other claim elements, they either render the claim invalid under 112, or they can be ignored under 102/103.  Do we agree on this much.

    I give you an example once again. A method of printing a book comprising steps A through Z, wherein the book is War and Peace.  I would presume that you would agree that which book is printed is substantially irrelevant to the claim's novelty.  Why?  Because which book has no functional relationship to any physical step.

  76. I may have got the term of art a bit mangled

    Lots of things getting just a bit mangled here.

    Not sure about Gene Quinn’s organs though.

  77. Why that’s easy according to MM, just tune in every Tuesday at 12 noon.

    Hello? Hello? Haven’t you been paying attention?

  78. And viva “that”, Monkey.

    Once one gets a proper ear for the restrictive/nonrestrictive clauses, those “which’s” sound awful.

  79. Wait, it was the sockpuppet/anti-patent txxbxxgxer MM that was just demanding this very day that the law was well-settled.

    I certainly wasn’t referring to the law relating to the “exception to the written matter doctrine”, sockie. Of course, you knew that. Keep trolling, though.

  80. providing us at least one example of a claim that fails the MOT but nevertheless is not abstract. Just one.

    IANAE called, he wants he fallacious argument back.

  81. Oh it is the applicant’s idea allright – but the subject is who is responsible for allowing claims to issue.

    You did really know that, right?

  82. Did I ever say I supported the claim?

    Reminds me, PP: do you think the claim is valid? Or are you one of those trolls that only likes to piss on little targets and not deal with the bigger issues?

    Rhetorical question.

  83. Maybe if you actually supplied a valid legal argument you could end your dealings.

    Of course, you would have to understand what a valid legal argument is.

    Not much chance of that happening as you are too busy with the usual types of posting you spew MM.

  84. Oversight: ""I dare you to find a quote from the Supreme Court that actually says that BMPs are patent eligible. Ditto Congress."

    The Supreme Court and the Congress do not have to say such if its already in the statute and the Constitution."

    OK, then. please give me the quote from the
    Constitution.  I assume we agree that we are talking about the U.S. Constitution and 35 USC section 100 and section 101, and not some hypothetical Constitution or some other statute.

  85. You get the picture?

    No, because it’s not clear what’s included in the “ETC ETC ETC” part.

    Thanks for playing, sockie.

  86. Given that fact, the law can hardly be considered as “well-settled” as sockpuppet/patent txxbxxgxer types imagine it to be.

    Wait, it was the sockpuppet/anti-patent txxbxxgxer MM that was just demanding this very day that the law was well-settled.

    Ohhhh – not in his favor. That’s why the double standard.

    Gotcha.

  87. Hmm, is the opposite of "the claim is abstract if it does not comply with MOT," this: "The claim is not abstract if it complies with MOT?"  I think the Supreme Court did say or imply this.

    Regardless,  I think we all agree that if the claim complies with MOT, it is not abstract.  But I think it is your position that the Supreme Court agreed in principle with the proposition that a claim could hypothetically not pass the MOT but still be patent eligible.  

    Now, if you could Speak Up, why don't you fill us all here with a little bit of enlightenment by providing us at least one example of a claim that fails the MOT but nevertheless is not abstract.  Just one.

  88. you are so full of sh_it, that to tackle all of your veritable unending nonsense would be a full time job.

    I highly doubt you are capable of “tackling” any assertions I make in any of my comments, PP, but please make an effort to “tackle” them and please continue using your unclever pseudonym.

    If your claims about yourself are true, I look forward to a fruitful debate. On the other hand, if, as I suspect, they are merely the autofellations of a hypocritical dxpshxt, then I expect only more restroom stall scribblings from you.

  89. Yay – the same old tired and defeated argumetns get trotted out!

    Don’t wake me I know how this ends.

  90. Jeebus effin cripes

    Try this: it IS your position that all processes or methods for doing ANY CATEGORY OF PROCESS are patent eligible, as a matter of law.

    FIXED.

    Now try to figure out (c’mon you’all are intelligent) why this statement places BMPs on equal ground with methods or processes for creating new drugs, organic compounds, molecules of any sort, multi-cellular living organisms, new various categories of the chemical arts, of the mechanical arts, of the optical arts, ETC ETC ETC.

    You get the picture?

  91. Les, “Even under MOT, what needs to be transformed is an article. A data bit qualifies as an article.”

    So, the only thing wrong with Benson is that the Supreme Court did not recognize that the calculation involved in that case called for the transformation of data. But, Les, you are here to tell us that we can safely take the position in the patent office and in the courts that Benson has been rendered obsolete by subsequent “objective” scientific investigation into computer hardware, as discussed in such cases as In re Alappat, wherein the computation of such things as “price” or “risk” involves the transformation of data from one state to another and therefore is patentable subject matter.

  92. That’s not what I said at all.

    Why yes it is.

    Come to think of it, what you just posted doesn’t seem to make any sense whatsoever.

    There, see? it is exactly what you said.

    No wonder you support the claim–it must resonate with your sense of illogic!

    Now there you go again. That’s how I know I was dead on nuts. Did I ever say I supported the claim? No. That’s your keen rush reverberating restlessly. Lots of exercise you get with all that rushing and jumping to conclusions. I was merely making fun of you (of course, with your generous help). Slow down and enjoy the posts. Or don’t, and let me enjoy your fo_olishness. Either way works wonders.

  93. You obviously don’t know me. I have been posting for years under my pseudo-name, just mostly at my favorite haunt of the Patent Hawk (and in part he dropped comments because he could not handle my stunning and stellar and devilishly devastating incites.

    I am well aware of who you are and what you are (and just as importantly, what you are not).

    I do as I please, when I please and I don’t answer to anyone, least of all to a schmuck like you.

    I play what I decide to play, not what you decide. I will tell you when it is OK to thank me.

    Toying with you would be fun, but you are so full of sh_it, that to tackle all of your veritable unending nonsense would be a full time job. No Thank You. I will post when, if and how I feel like it. Not up to your smarmy standards? Awww, do you see me crying?

  94. “Les’s brain cannot and will not accept the fact that courts are permitted to “dissect” claims and ignore parts of claims for a variety of reasons.”

    Wrong:

    “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. This is particularly true in a process claim because a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made.” (Diamond V Diehr)

    ::FIXED::

  95. Malcolm, while the PTO certainly is way too lax regarding BMPs and software related invention, I would put the primary blame, if not the sole blame, on one person:

    Giles Sutherland Rich.

  96. the one that indicates that printed matter is acribed patentable weight if there is ANY functional relationship with the substrate the matter is printed on.

    Indeed. Many of us here understand the so-called “Written Matter Doctrine” far better than the sockpuppets. Including in that undersanding is the understanding that a reasoned basis for the so-called “exception” and, more particularly, the manner of its application to various technologies is sorely lacking. Given that fact, the law can hardly be considered as “well-settled” as sockpuppet/patent txxbxxgxer types imagine it to be.

    It’s curious, sockie, that you rush so quickly to Les’s defense when Les is so plainly confused about the Written Matter Doctrine and the rest of us so plainly are not. The only other non-sockie contributor I’m aware of here who shamelessly crxps on the Written Matter Doctrine is EG (surprise! – a regular commenter over at Dear Leader Quinn’s blog).

  97. ” How about “abstaining from doing something”? That has a definite ending.”

    Wrong.

    abstaining from doing something is a continuous process.

    ::FIXED::

  98. I addressed it properly. You said: But only the patentable bits have to be evaluated, not the mental steps unless they are applied to a physical step.

    I was replying to that. You can’t look for “patentable bits” in isolation. The claim can recite a patentable combination of individually unpatentable bits.

  99. the function is for the media to carry the information to the machine for reading by the machine

    Distinguish that from a recipe, where the function is for the cookbook to carry the recipe to the chef for reading by the chef.

    Distinguish it from a limerick on a coffee mug, where the function is for the coffee mug to carry the limerick to a person for reading by the person.

    Distinguish it from a music CD, where… I’m sure you get the point by now.

    They’re all passive media, and they don’t do different things with different information. There is no functional relationship between the medium and the stored information, because the only function of the medium is to dump out whatever it has when it receives a read command.

  100. If the substrate is machine readable media and what is printed is machine readable information, then the function is for the media to carry the information to the machine for reading by the machine and there is a functional relationship between the media and the information.

  101. “I dare you to find a quote from the Supreme Court that actually says that BMPs are patent eligible. Ditto Congress.”

    The Supreme Court and the Congress do not have to say such if its already in the statute and the Constitution.

    :: Fixed::

  102. Doing Nothing is an oxymoron.

    So is “limiting” an open-ended claim by adding a step of “allowing”. LOL, sockie.

    How about “abstaining from doing something”? That has a definite ending. It also has the same meaning as “doing nothing”. So much for your word games, sockie.

    Do you have an 6th grade child, by chance? If so, consider a pinch hitter next time.

  103. IBP, thanks for your analysis.

    Regarding substantial utility, I’m not so sure. What is being done here has been done for a very long time — for a profit mind you. People create lists of people with a short profile, inform the members of the list of the profile and invite updates.

    These lists are used to create social registers, Who’s Who books, lawyer, doctor or other reference manuals and the like. The utility of the lists seems quite obvious. They have real, commercial value.

    Now consider such a list as if it were completely new and unobvious, which it is not. Would it be patent eligible, and if not, why not? I’d like your views on that topic.

  104. “Now, I ask you this, is such data in any way representative of physical real world phenomena?”

    That is not a requirement.

    Even under MOT, what needs to be transformed is an article. A data bit qualifies as an article.

  105. A claim is abstract if it does not comply with the MOT.

    EXCEPT THAT IS THE OPPOSITE OF WHAT ALL NINE SUPREME COURT JUSTICES SAID IN BILSKI.

    (all caps for the hearing impaired)

  106. that the step being well known is irrelevant to the obviousness analysis because obviousness is assessed as to the claim as a whole

    Now there’s an appeal brief I’d love to read.

    No kidding. Because the software patent types succeed too often with these juvenile recitations of “Da Lawlz” when practicing before the overwhelmed, undertrained, or simply incompetent Examiners in the computer-implemented art units at the USPTO, they think the arguments are compelling elsewhere.

    Someday they’ll grow up. But not until they’re forced to. In the meantime, we’ll have to deal with the endless regurgitating and childish whining.

  107. This is the Blog Police, maam.

    Have you been blogging for a year with that name? Can you prove it? Come with me, you are under arrest.

    There (whew). The blog is now safe for the likes of MM to troll (eliminate the competition – that’s what I say)

  108. your job (and your job alone).

    Man up, 6. Quit pretending that getting those claims allowed was the applicant’s idea.

  109. As if I’m an examiner.

    That’s a given.

    The better question is should you be an Examiner.

    If you had any kahunas, well, you would not have given the answer you have. You would have owned up to your job (and your job alone).

  110. the one that indicates that printed matter is acribed patentable weight if there is ANY functional relationship with the substrate the matter is printed on.

    That one.

    A set of data or instructions (e.g. software) is not functionally related to the substrate. It’s functionally related to the reader, at best. Just like a recipe in a cookbook. It’s exactly the kind of thing the printed matter doctrine was developed to disallow in the first place.

  111. Malcolm, I share your frustration.  But with these folks you have to take baby steps so that they can actually see that what they say is, let us put it gently, suspect.  They seem wedded to a reality that does not exist, and with these kind of folks, discussions can be had, but slowly.  Very slowly.

    Have you ever dealt with a seriously mentally ill person wedded to their delusions?  I have. Discussions with such folks are all but impossible.  But it can be done.  Some psychologists actually believe such discussions can help in a cure.  Psychiatric professional, however, are skeptical. 

    I place you in the latter category.

  112. More correctly, consideration of the remainder of the spec in those circumstances is not within the statutory mandate of 35 USC.

  113. But if significance of the modification is in the meaning of the words, I think the transformation remains abstract.

    Unless of course those words have some functional relationship, then, well,…

    Come on in!

  114. functional relationship

    That indeed is the key.

    Of course, the door is unlocked and wide open, but if you ever need the key, there it is.

  115. Of course this has nothing to do with ignoring information printed on a piece of paper when determining the patentability of a claim reciting a piece of paper with information printed on it. How intelligent does one need to be to understand this elementary, settled fact of patent law? Or, put another way, how dishonest does one need to be to pretend not to understand this elementary, settled fact of patent law?

    Do you mean that well-settled fact of patent law captured in the Written Matter Doctrine, replete with the Exception to the Written Matter Doctrine?

    That well-settled fact of patent law?

    That one that only those who are dishonest pretend not to know and understand?

    That one?

    You know, the one that indicates that printed matter is acribed patentable weight if there is ANY functional relationship. That one?

  116. Oversight, while that may be your position, I dare you to find a quote from the Supreme Court that actually says that BMPs are patent eligible.  Ditto Congress.

  117. Pedantic–

    That’s not what I said at all.

    Come to think of it, what you just posted doesn’t seem to make any sense whatsoever.

    No wonder you support the claim–it must resonate with your sense of illogic!

  118. Les, I think you addressed this post to the wrong person because I cannot believe you would seriously contend that extraneous matter that had no functional relationship to the claimed subject matter could actually be relevant to 103 consideration.

  119. I didn’t say it “made the claim invalid”.

    Please try reading the posts, oversight. The point I made in the 2:06 post was made subtly, and will only be understandable to those of us who have deeply considered claim drafting.

  120. Wrong.

    Doing Nothing is an oxymoron.

    Which by its nature would mean you never know when you’re done.

    Allowing is an action word with a definite ending. ( allowed)

    ::FIXED::

  121. Jeebus effin cripes, Ned, can’t you at least try to anticipate the sockpuppet response to your comments before hitting the “post” button?

    it IS your position that a BMP, meaning a process or method for doing business, are patent eligible,

    Try this: it IS your position that all processes or methods for doing business are patent eligible, as a matter of law, even where (1) the process is purely mental or (2) even where (i) no particular machine is recited in the claim, (ii) where only information (and not matter) is transformed during the practice of the claim, and (iii) where the only utility is a change in the profits recorded by a party acting or acted upon by the claim.

    At least that way you can pretend to have a bona fide discussion for a couple comments (before the sockpuppet inevitably sticks its foot deeply into its mouth, whereupon its inability to discuss the issues honestly will become apparent).

  122. Well I wouldn’t put it quite like that. But what else but an “interaction” with the published profile could prompt a letter to the Editor, to get the profile corrected. Mere passive reading isn’t enough, is it? Does there not have to be some re-calibration or some transformation, some information processing going on, in time and space, some computing steps even, while reading your own profile?

    What was the date of that claim again? Do you still assert that it embraces nothing that was already known? Seriously?

  123. that the step being well known is irrelevant to the obviousness analysis because obviousness is assessed as to the claim as a whole

    Now there’s an appeal brief I’d love to read.

  124. Les, I bring up the printing press to illustrate a point.  

    Publishing step is what is important.  It publishes information.  The use of a computer readable media to store the information is virtually irrelevant as the only way the computer readable media varies from all other media is by its informational content.  

    The claim as a whole produces accessible profile data about selected people.  

    Note, I said, claim as a whole.

    Now, I ask you this, is such data in any way representative of physical real world phenomena?

  125. Still trying to extract a response from you as to what is wrong with the “allowing” step, Moonbeams.

    The only explicit response you give is that the step is a “friggin joke,” which is merely a mis-bred’s way of restating the original proposition that the step is flawed.

    It is clear that you feel that the step is well-known in the PA, and I believe I have already agreed with that proposition.

    But to repeat myself yet again, the fact that the step is known, does not mean that it is flawed, that it is a “joke,” or that it shouldn’t be in the claim.

    Nor does it mean that the claim is obvious. In fact, if ALL the “friggin” (to borrow your gracious term) steps are known in the PA, that still doesn’t mean the claim is invalid for lack of novelty or obviousness.

    OK, so we have resolved: 1) the fact that the step is well known in the art; and, 2) the legal issue that the step being well known is irrelevant to the obviousness analysis because obviousness is assessed as to the claim as a whole. So, once again, what’s wrong with the step??

    Perhaps, instead of trying to teach you to sing, I should be spending my time teaching you to find truffles. You would have more fun, and I would realize a useful result.

  126. Thanks for the cites, Les.

    Of course, those cites are completely non-responsive to the specific issue we’re discussing (the well-settled case law regarding the appropriate disregarding of information printed on a piece of paper when determining the patentability of a claim reciting a piece of paper with information printed on it). I humbly suggest that if you were a patentee trying to patent an old kit with new instructions and you cited only those cases in defense of your claim, then a Rule 11 sanction would be manifestly appropriate.

    The secondary issue is your (almost certainly willful) ignorance of the fact that analyis of obviousness requires the marrying of limitations in the art from diverse references. Almost invariably, HOW those limitations are presented by the prior art is extremely important for determining the conclusion. For instance, whether all of the limitations except one are found in one reference, or whether five references needed, or whether there is inherency etc. Like it or not, the analysis involves “claim dissection” (at least as that term is broadly defined by patent txxbxggxrs such as yourself), i.e., it involves examining the parts of the claimed invention for the purpose of understanding how those skilled in the arts understood the functions of those parts.

    It appears that it somehow (LOL) “escaped your attention” that the cases you cite deal with much more egregious mistakes by lower courts. This sort of error is the kind that one expects of a summer intern without any patent law experience. Or it’s just dishonest wanking, Les. Or a failed attempt at parody. But, hey, the sockpuppets appear to love your shtick and admire your intelligence so keep it up.

  127. “I want to note for the record that it IS your position that a BMP” meaning a process or method for doing business, are patent eligible,

    For the record this is THE position of the United States Congress and the Supreme Court of the United States.

    :: FIXED::

  128. Why does an “allowing” step make a claim invalid?

    Allowing, is an action word is it not?

    Process claims are supposed to begin with verbs ( action words), are they not?

    Even if the act is mere mental this one step of allowing would not make the entire claim de facto invalid.

    :: Fixed::

  129. Les, indeed I have noted the same incomprehensibly of the Supreme Court decision in Bilski.  They say that BMPs are not categorically excluded, and in same breath, exclude them nevertheless by declaring the claims at bar, which were classic BMPs, to be patent ineligible.  

  130. you are wrong, even if the individual bits are not patentable, the recited combination can be and you have to consider the claim as a whole. Rope, pulleys, wood and canvas were not patentable, but a glider wherein rope pulleys wood and canvas were adapted to form a warp-able wing was.

  131. I have not problem with legitimate 112 rejections. Why are you bringing them up?

    Why are you going on about printing presses?

    Someone implied that the claim under discussion clearly fails the 101 test because there is no machine. I said, it is tied to a machine, if you don’t see a tie to a machine by use of the word “virtual” then there is a tie to a machine by the use of a machine readable media….not that I accept an assertion that a method claim must be tied to a machine, because it is an absurd assertion, which I do not accept.

  132. I want to note for the record that it IS your position that a BMP, meaning a process or method for doing business, are patent eligible, leaving only the question of 102/103/112.

  133. As usual, sockie is quick with the ad hominem but otherwise finds nothing to disagree with in my comment. Thanks for playing, sockie.

  134. What gives with you and attacking Gene Quinn?

    Don’t try to change the subject, sockie.

    The self-proclaimed “Watchdog” is beloved by many of the sockpuppets who post here. Maybe they are not telling the truth when they extoll his Profound Greatness and the True Importance of his blog, which is managed (according to the sockpuppets) with Supreme Wisdom, thus accounting (in part) for its Profound Greatness. They do seem to love him, dearly. I find that interesting, just as you find it interesting to ignore Les’s bizarre indefensible statements and focus instead on my alluding to the fact that Gene is worshiped and quickly defended by nearly all sockpuppets (like you) who troll here.

    Notice that I answered your question. Now answer some of my mine, and maybe ask Les some questions while you’re at it. Or perhaps you’d like to answer some of my questions for Les. Are you up for it sockie? Or would you just like to continue trolling?

  135. “IIRC, the government brief in Prometheus would ignore, for 102/103 purposes, any “step” in a claim that did not modify a physical act.”

    No that is not correct.

    ::Fixed::

  136. Les, as a general matter, I agree with you that one must assess a claim as a whole for 103 purposes. But the cases you cite make certain assumptions, one of which is that the claim otherwise passes 112. If, for example, a claim term has no functional relationship with the other elements of the claim, just how can one properly evaluate such a claim under 101/102/103 except by ignoring it.

    Thus I claim real step A, doing something completely unrelated to Step A or to Step B, and real step B. For example, an egg boiling claim where I place an egg in boiling water and remove it after a predetermined time. I add to these steps fixing my car in the garage.

    How can one even begin to discuss whether such a claim is obvious?

    Now, back to the printing press. If I claim an improved printing process involving setting type, applying ind and closing a press on a paper for a time, of what relevance to this process is it that the what I am printing is the Bible? The informational content has nothing to do with the process and is like the step of fixing the car in the garage while boiling an egg.

    Thus, if a claim does have a physical step, but it is old, varying only from the prior art because of its information, we are skating very close to a lack of functional relationship between the physical step and the information content.

  137. So Abstract means anything that does not comply with MOT? But the Supreme Court said MOT is not the only test and in the same breath said Bilski is abstract and therefore not patentable.

    Are you saying Bilski was claiming a law of nature? That Bilski was claiming something akin to electricity?

    nonsense.

    If the meaning of Abstract is self evident, then tell me what it means.

  138. Is it a sign of cowardice to not answer questions?

    It certainly is, PP, when the question is a simple and direct question addressing an obvious implication or the plain meaning of another’s assertion.

    Here’s a question for you, PP: assuming you are aware of such a question (see above) and have the time to type an answer, when would it not be a sign of cowardice (or at least intellectual dishonesty) to avoid answering such a question?

  139. BMP, meaning constitutional.

    Bilski (14) upholds. Diehr controls. Flook Benson Cabined.

    If these claims are Novel, questionable.

    ::FIXED::

  140. sockie the pathetic sockpuppet: It is also known that you frequently have used sockpuppets

    LOL. Is that what SmallPeeingGuy told you? Unfortunately, only Dennis knows the frequency of my use of sockpuppets. If memory serves, I think I’ve made two comments under a non-recognizable pseudonym this year. One of those times was an obvious joke. Is that what you mean by “frequently”, sockie?

    Like I said, I think it would be great for Dennis to identify the one or two greatest abusers every month and ban their IP addresses. It would clean things up a lot around here and would enable all those who comment and all those who read the comments to better understand the motives and nature of the commenters.

    I don’t mind at all if interested parties like Les and Actual Inventor and NWPA (or even you, sockie) want to come here and make fools of themselves every week, just as I don’t mind if those folks wish to do nothing except engage in ad hominem attacks and recite their pleasing mantras over and over, even as their child-like dreams about how the law should be are slowly but inexorably reduced to a pile of ashes by the Federal courts.

    For a number of obvious reasons, I do mind when those same folks create imaginary friends for the sole purpose of name-calling and/or avoiding the embarassment associated with publishing a comment that is completely indefensible, legally and/or logically.

    If you are incapable of admitting that you are mistaken or or you are incapable of defending/explaining your own statements when asked a direct question about the statement, then you are by definition an axxhole/blogtroll with motives that are, at best, purely selfish.

    Maybe you should try harder, sockie, to demonstrate that your alleged concern for “legal accuracy” isn’t just an excuse to create a “trainwreck” and/or be a hypocritical dxckhead to certain commenters whom you believe have (trying not to laugh here) “an agenda” that you disagree with. Stick with your new pseudoynm for a year or two and show the community that you’re not full of shxt. I’m guessing you’ll not take kindly to this advice, of course. In fact, I’m predicting that you’ll ignore it completely while pretending that axxhole sockpuppets are something to be admired in a blog comments section.

  141. If abstract meant not producing a physical result, I think you would agree that claims that only produced abstract results would be abstract even if the method and means were clearly described and even if they involved physical machines and processes.

  142. Night, this is where I think you have a point, but the Supreme Court is clear that they disagree. While the Supreme Court I believe will agree that the measurement of heart signals from a patient, processing the signals in a computer, and then outputting a signal indicative of a risk of heart attack, would be patentable, I think they would balk where the inputs and outputs were abstract, in the sense that they did not originate from physical phenomena or where they did not produce a physical transformation.

    Thus for example if the inputs were income data, expense data, and the like, and the output were optimize strategy for tax reduction, I think both the Supreme Court and Congress would balk even though such a program would be extremely valuable.

    Circling back, a real transformation in data occurs when the data source or data output, or both, are real.

  143. You might try citing to it then.

    On this thread and on any of the other threads that you extensively quote from it on.

    A quick check on the search engine for Patently-O for that cite shows no results for the last two years.

  144. I may have got the term of art a bit mangled, but don’t US lawyers have something they call the “straight face” test. Whatever you call it, with me your Alice in Wonderland answer “I interpret interacting as something other than reading” just failed it. Magazine publishers and readers not “interacting”? Huh! Have you never seen a Corrections Column or a Readers’ Letters page? Try telling a publisher that his illustrious organ throughout its history has signally failed ever to secure any “interaction” with its readers. See what he retorts (but, for your own safety, first take two steps smartly backwards).

    I admit, my straight hand-written text might not always be “machine-readable” but I rather think that published typescript generally is. Don’t you?

    As to mailing lists, ever tried to get off one? Who isn’t on these infernal lists?

    Have you ever thought of interacting with Gene Quinn’s organ? You might enjoy yourself more there.

  145. Night, a computer that has real world inputs and real world outputs and transformations of data representative of signals is patentable in my book.  They problem arises when the inputs and outputs themselves are abstract.  Eg, price, risk, information about a person.

  146. Simple,

    A question for you: Is it a sign of cowardice to not answer questions? Consider who you are dealing with before answering (if you are intelligent and brave enough to answer).

  147. I wrote: There is a big difference between posting under a consistent pseudonym and changing one’s “identity” every other week. I bet that you are intelligent enough to understand what the difference is. I also know that you are not honest enough to admit it.

    Thanks for behaving exactly as I predicted.

    You still have a chance to prove me wrong, sockie. Go ahead. Surprise me.

  148. IBP, if you continue your discussion with “simple mind” you will learn quickly that “simple mind”, like all pxtxnt txxbxggxrs, believes that claims must be construed to preserve the invention as the inventor must surely have imagined it at some point, i.e., if they “don’t make sense” as written that is only because you aren’t trying hard enough to rescue them from ineligibity under 101 or invalidity under 102/103/112.

    The reason pxtxnt txxbxggxers behave this way is that they are, in nearly every case, deeply invested in the patentability of computer-related crxp. Most of the practitioners in this area (shall we include Mr. Agarwal? LOL) are inept and their ineptitude is encourgage by the USPTO which bends over backwards to help them. Are these practitioners grateful? Nope. They only complain more. Why? Because that’s all they can do. The patent laws that apply to everyone else cannot apply to them.

    There can be no patent-worthy distinction to be drawn between a “virtual community” (an ancient concept) and a meatspace community when both the specification and the claimed invention fails to identify a single problem related to the creation of the vaguely defined “virtual community” or a solution to the problem. As usual, we see a patent troll, the USPTO and “simple minds” doing whatever they can to perpetuate the myth that “computerizing” ancient concepts constitutes a patentable invention.

    Someday the software and computer-implemented art units will “grow up.” Until then, every Tuesday we can look forward to new crxp and every day here we can look forward to deeply ignorant and/or dishonest children complaining about how unfairly they are treated (and at the same time praising Gene Quinn — go figure).

  149. You asked if I’m blaming the applicant for “my decision” to allow claims. As if I’m an examiner. But even presuming that I was, the answer is yes. And I’m blaming the courts three times as much as the applicant for not slapping people with fines for even attempting such rubbish in their courtroom and setting the stage for more stooges to try this sht at the office. And I’m blaming congress a thousand times more than the applicant for not statutorily imposining fines for even attempting such and clarifying their lawls on obviousness and eligibility more clearly. And finally I’m blaming corrupt lawltards for having a hand in perpetuating this broken system when it is so easily fixed if they’d all do something about it.

    You know an easy way to end these kinds of ridiculous claims? Simply fine people 20-50 grand if they persist in an application on a rejected claim of this type after a rejection. Easy mo fin’ peasy. Enact it and see this sht go away.

  150. Les, more apt is that the reason the Bilski claims were abstract were assumed to be self evident, as if everyone knew what abstract meant.  

    When one considers what abstract meant, we get back to circular reasoning, as abstract in the context of patentable subject matter means a principle "in the abstract" not reduced to a practical result as in the manufacture of an article of commerece.  I quoted Curtis, who was discuss Le Roy v. Tatum, among other cases, a case also relied upon by Benson, Diehr and many other Supreme Court cases.  Le Roy v. Tatum had this to say,

    "The word principle is used by elementary
    writers on patent subjects, and sometimes in adjudications of courts, with such a want of precision in its application, as to mislead. It is admitted,  that a principle is not patentable. A principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right. Nor can an exclusive right exist to a new power, should one be discovered in addition to those already known. Through the agency of machinery a new steam power may be said to have been generated. But no one can appropriate this power exclusively to himself, under the patent laws. The same may be said of electricity, and of any other power in nature, which is alike open to all, and may be applied to useful purposes by the use of machinery.

    In all such cases, the processes used to extract, modify, and concentrate natural agencies, constitute the invention. The elements of the power exist; the invention is not in discovering them, but in applying them to useful objects. Whether the machinery used be novel, or consist of a new combination of parts known, the right of the inventor is secured against all who use the same mechanical power, or one that shall be substantially the same.

    A patent is not good for an effect, or the result of a certain process, as that would prohibit all other persons from making the same thing by any means whatsoever. This, by creating monopolies, would discourage arts and manufactures,
    against the avowed policy of the patent laws.

    A new property discovered in matter, when practically applied, in the construction of a useful article of commerce or manufacture, is patentable; but the process through which the new property is developed and applied, must be stated, with such precision as to enable an ordinary mechanic to construct and apply the necessary process. "

    The quotation ends with what we now recognize as the MOT.  What we garner then is this:

    A claim is abstract if it does not comply with the MOT.

  151. I recognize that you’re making the issue be intrinsically in what the circuit is doing, rather than, oh, say, what it is.

  152. it is mandated.

    I am positive that it is not.

    Did you learn this from 6 (that might explain a few things)?

  153. The claim is a part of the spec.

    Are you taking too much time to find things funny, and not taking enough time writing your posts?

    At 1:53 PM you want to read the claims without the spec, and now in a defense against your poorly written post, you want to claw that back.

    Just an idea: Think more. Post when ready.

  154. An out-of-context is not just invited, it is mandated.

    After properly considering the claim, you never even get to the spec, because nothing in the spec could correct the logical deficiency that exists in the claim.

    Unless the spec clearly defines a particular system of logic that is to be used in claim construction, that is!

  155. The claim is a part of the spec.

    The claim is logically nonsensical–the steps do not describe the operation stated in the preamble. There is no uncertainty or ambiguity in the claim that can be resolved by consulting the remainder of the spec.

    Since no steps are disclosed in the claim that could enable the making and using of the invention disclosed in the preamble, regardless of what is in the remainder of the spec, the claim not only does not enable the invention, it does not enable the remainder of the spec to enable the invention.

    Thus, although “the claim doesn’t have to enable the invention” by itself, it DOES prevent the enablement of the invention by the entirety of the disclosure.

    112p1 fail.

  156. BTW, the step of “allowing” is funny not because of the type of operation it attempts to describe, but because of the WAY in which it tries to describe it.

    If the claim had been drafted properly, a limitation like “allowing” would never have been used. Of course the only effect of the claim having been drafted properly would have been a quicker and easier disposal under 101, 102, and/or 103.

    The very fact that it WAS used is what is so funny because it illuminates brightly the precise reason that the claim is invalid–at the same time that the applicant is applying for a patent, they are furnishing the reason for rejection–and to me, a patent attorney, THAT is funny!

  157. “The claim steps do not enable anybody skilled in the art to make and use…

    The claims don’t have to enable the invention.

    Fail.

  158. I only read to”Why not look at the spec? As it will turn out, I don’t think it will be required.

    An apriori decision to throw away a tenant of claim construction can only lead to trouble.

    You are inviting an out of context interpretation. Why?

  159. What is claimed is:
    1. A method of creating an interactive virtual community of people in a field of endeavor, comprising the steps of:
    a) selecting a field of endeavor;
    b) compiling a list of members in the selected field;
    c) selecting a member from the compiled list of members based on a preselected factor;
    d) obtaining biographical information about the selected member;
    e) processing the biographical information in a preselected format to create a personal profile of the selected member;
    f) publishing the profile of the selected member on a machine readable media; and
    g) allowing the selected member to interact with the profile.

    Let’s take a look at the actual claim.

    Let’s do this without considering the spec, and by construing the claim in favor of resolving any ambiguity in favor of patentability.

    Why not look at the spec? As it will turn out, I don’t think it will be required.

    First premise: THE PREAMBLE IS ALWAYS LIMITING (I know, I know, but I’m going to keep advocating this for both logical reasons that I have already articulated, and for practical reasons as will be revealed in the following analysis).

    What does Agarwal purport to have invented? “A method of creating an interactive virtual community…”

    Again, assume that ambiguities concerning “people”, “field of endeavor”, and their implications, have been resolved in favor of patentability.

    What the lettered claim steps define is the creation of a grouping of individual member-accessible member profiles.

    This “grouping” constitutes a “community” only if a community is synonymous with a grouping–and let’s say, again to preserve patentability, that it is.

    Now the important questions: Is this grouping both “interactive” and “virtual”, as required by the (always limiting) preamble?

    From one definition, “interact” roughly means acting, or capable of acting, on each other. In the preamble, “interactive” modifies the singular “community”. Nowhere is it detailed that said singular community intereacts, or is capable of interacting, with anything else. Certainly an individual member of that community is capable of “interacting” with that member’s own “profile” within the grouping of profiles, but the individual member does not “interact” with the singular “community” as required by the preamble. A “community” can permit interaction among and between its members, but that is not what is contemplated in the claim language.

    Also, is the grouping of profiles “virtual”? Most certainly not. The grouping actually exists, and is even published. Oh, you’re saying that the “profiles” are virtual representations of the “members” of the community? Although it would have been better if it had been, that was NOT what was stated in the claim–what was stated was that the “community” (grouping) was “virtual”, NOT that the profiles were virtual representations of actual persons.

    There is a desperate need for us to remain faithful to the well-settled and understood rules of grammar, when construing patent claims. Adherence to those rules should be the MINIMUM requirement of claim construction, and the foundational requirement of 35 USC 112. A patent claim should be GRAMMATICALLY CORRECT AND LOGICALLY CONSISTENT in the first instance. This should be the MINIMUM requirement of claim drafting, and there should be no reason sufficient to excuse a drafter from this requirement.

    What has happened here, IMHO, is that somebody tried to describe the simple generation of a list using concepts and verbiage that they hoped would imbue the claim with an aura of patentability, and tripped all over themselves trying to do so.

    The claim steps do not enable anybody skilled in the art to make and use an “interactive and virtual community”, and do not particularly point out and distinctly claim “the creation of an interactive and virtual community”.

    112p1 and 112p2 fail.

    And, of course, the claim totally fails to satisfy the “substantial utility” requirement of 35 USC 101.

    101 fail.

  160. 6, in a broad sense one could say everything is a drafting issue. But, in this case, one should recognize that the issue is intrinsically in what the electric circuit is doing.

  161. “If they were abstract, then you couldn’t practice the invention”

    Tell it to SCOTUS, Bilski, Benson, and Flook brosky.

    “What the SCOTUS is really striving to figure out is the whether or not you are entitled to the scope of the claims”

    Mhmmm.

    “Now, normally, when one goes about determining this one looks at other ways the invention can be practiced to determine if the claims are too broad.”

    And you also look to see if they did nothing but claim an abstraction.

    “One does not go through a pyschotic process of a drug induced dream where one spews out sentences of abstraction and then ends with a conclusion that the claims are not eligible for patentability.”

    You’re right, “one” does not. Several thousand do.

    Remember tard, this is your lawl, psychotic tendencies and all.

  162. Distilling an invention down to the “gist” or “thrust” of an invention disregards the requirement of analyzing the subject matter “as a whole.” W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984) (restricting consideration of the claims to a 10% per second rate of stretching of unsintered PTFE and disregarding other limitations resulted in treating claims as though they read differently than allowed); Bausch & Lomb v. Barnes-Hind/Hydrocurve, Inc., 796 F.2d 443, 447-49, 230 USPQ 416, 419-20 (Fed. Cir. 1986), cert. denied, 484 U.S. 823 (1987) (District court focused on the “concept of forming ridgeless depressions having smooth rounded edges using a laser beam to vaporize the material,” but “disregarded express limitations that the product be an ophthalmic lens formed of a transparent cross-linked polymer and that the laser marks be surrounded by a smooth surface of unsublimated polymer.”). See also Jones v. Hardy, 727 F.2d 1524, 1530, 220 USPQ 1021, 1026 (Fed. Cir. 1984) (“treating the advantage as the invention disregards statutory requirement that the invention be viewed ‘as a whole'”); Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1 USPQ2d 1593 (Fed. Cir.), cert. denied, 481 U.S. 1052 (1987) (district court improperly distilled claims down to a one word solution to a problem).

  163. In determining the differences between the prior art and the claims, the question under 35 U.S.C. 103 is not whether the differences themselves would have been obvious, but whether the claimed invention as a whole would have been obvious. Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 218 USPQ 871 (Fed. Cir. 1983); Schenck v. Nortron Corp., 713 F.2d 782, 218 USPQ 698 (Fed. Cir. 1983)

  164. Isn’t only trolls that engage in unprovoked personal attacks?

    What gives with you and attacking Gene Quinn?

  165. It’s hardly an obsession,

    On the contrary, it is very much an obsession with you. In fact, the next point indicates how much of an obsession it is.

    the sockpuppets, such as yourself, of their cowardice. There is a big difference between posting under a consistent pseudonym and changing one’s “identity” every other week.

    You assume too much.

    I have used this consistent moniker since I started posting on this blog a few weeks ago.

    I think that you are seeing ghosts where they do not exist. Might be a Macbeth thing, with your guilty mind making you see blood where it is not.

    I bet that you are intelligent enough to understand what the difference is. I also know that you are not honest enough to admit it.

    I asked a simple question. Why can you not give me a simple answer?

    Instead, I am insulted, and have my intelligence and honesty maligned.

    The posts painting you as an Ogre, trying to bully people are correct. What does it feel like to be such an “internet tough guy”?

    complaining about. It’s also something that the sockpuppets love to engage in themselves. Are you starting to get the picture, sockie?

    MM, it is known that you are the biggest complainer on this blog (I have read for quite awhile before commenting). It is also known that you frequently have used sockpuppets. What picture am I supposed to be getting?

    Besides which, you have not answered my questions.

  166. The claim has to be evaluated “As a whole”. You can’t dissect out pieces that are know individually and examine what is left.

    The patent txxbxggxrs mantra! Repeat infinitely, whenever the result is one that you do not like. Like all pxtxnt txxbxggers, Les’s brain cannot and will not accept the fact that courts are permitted to “dissect” claims and ignore parts of claims for a variety of reasons.

    If you do that, the Wright brothers can’t patent wing warping… ropes, pulleys and bending wood were all known….

    Of course this has nothing to do with ignoring information printed on a piece of paper when determining the patentability of a claim reciting a piece of paper with information printed on it. How intelligent does one need to be to understand this elementary, settled fact of patent law? Or, put another way, how dishonest does one need to be to pretend not to understand this elementary, settled fact of patent law?

    The sockpuppets know the answer, and so do the rest of us. Maybe one of the sockpuppets should ask the Wise and Wonderful Gene Quinn what he thinks. Tell him that MM sent you.

  167. Also re u and ibp its hilarous that we have a whole thead o patent lawlyers qqin about an examiner not rejectin over imaginary evidence. Go ahead n cite us up some art n start designatin on limitations ya tards.

    Iphone btches

  168. Perhaps your reading of interact is broader than mine. Since the claim already indicates the profile is published, I interpret interacting as something other than reading.

    Your scenario did not require that the magazine publish an articles about lawyers that were also on a list of subscribers to the magazine, as would be required if the claim is to be anticipated.

    If straight text is to be included in “machine readable” then –machine– would appear to be redundant…as anything “readable” would now be machine readable.

  169. No Max – But, since Bilski I have read many definitions of the word –abstract– and when I hold them up to the claims in Bilski I can’t see how the definitions apply.

    So, the Bilski ruling is indeed obviously patently useless…at least the part that says claims to something abstract are not patentable.

  170. It does too fall under that definition. Paper consists of individual fibers. Moreover, if it is machine readable, it must have something else, such as ink or magnetic ink or particles of toner.

    MOREOVER: machine readable paper is clearly a device to perform some function and produce a certain effect or result.’

  171. MD, if you haven’t already, please read Les’ comment at 1:00 pm Oct 26 (“If nothing else a machine readable media is a machine, just as a lever or inclined plane is a machine.”) and subsequent comments in the thread.

    The stxpxd may burn you terribly. I recommend thick latex gloves and safety goggles.

    Bottom line is that Les is incapable of discussing any subject coherently. All Les “knows” is that every process is eligible for patenting and every composition of matter is a machine. Why? Because he says so.

  172. Why do you have an obsession with sockpuppetry?

    It’s hardly an obsession, sockie.

    I simply want to remind the sockpuppets, such as yourself, of their cowardice. There is a big difference between posting under a consistent pseudonym and changing one’s “identity” every other week.

    I bet that you are intelligent enough to understand what the difference is. I also know that you are not honest enough to admit it.

    Do you think that the content-light posts really have any effect that anyone is concerned about?

    LOL. “Content-light” posts is something that sockpuppets never tire of complaining about. It’s also something that the sockpuppets love to engage in themselves. Are you starting to get the picture, sockie?

  173. Most rules of language are organic

    You mean, old enough that we don’t have the name of the guy who made them up? Even spelling wasn’t standardized in Shakespeare’s day, but I don’t see you complaining about that.

    Besides, even stylistic rules can be important, and can affect how we can use words to say what we mean.

  174. The comment system ate my first reply, so I’ll try again.

    What rule of language isn’t a fiction invented by people who thought the language could use a bit of structure?

    Most rules of language are organic — such as the one that says that “me am sad” is ungrammatical. Linguists spend a lot of time studying these “real rules,” as opposed to the stylistic rules that copy editors try to impose.

    Of course, I’m the first to admit that I adhere to the which/that distinction when I’m writing, because I know so many people out there consider it a “rule.” And I enforce the distinction on my legal journal — partly for the same reason, and partly because I think consistent style in a periodical is something to aspire to. But I certainly think it’s inappropriate to call someone “illiterate” (as a previous commenter seemed to suggest) — or otherwise criticize him — simply because he fails to adhere to a non-rule.

  175. The claims says nothing of paper. It says machine readable media.

    Paper is machine-readable media, Les.

    Welcome to the 20th century. That’s right. The 20th century.

  176. That doesn’t even remotely follow from what I said. The question was whether paper with machine-readable instructions written on it counts as a “machine.”

  177. Is the patent statute “useless” because it does not define “obvious”. Me, I’m not sure what “define” means. These threads are obviously patently useless until we have from SCOTUS a definition of define.

  178. Ah, so magazine publishers don’t “compile” lists of potential subscribers, and published text is not machine “readable” and the publication doesn’t “allow” the profiled to “interact” upon reading his profile as published. You must be putting a narrower interpretation on these three claim elements than I was. Is that legitimate?

  179. “The Supreme Court has defined the term ‘machine’ as ‘a concrete thing, consisting of parts, or of certain devices and combination of devices.’ This ‘includes every mechanical device or combination of mechanical powers and devices to perform some function and produce a certain effect or result.'” In re Nuijten, 500 F.3d 1346, 1355 (Fed. Cir. 2007) (citations omitted).

    Paper would clearly not fall under this definition of “machine” — it doesn’t consist “of parts, or of certain devices and combinations of devices.”

  180. “The [which/that] rule is a fiction, invented during the 19th century by men who thought it would be nice to clean English up a bit . . . .”

    What rule of language isn’t a fiction invented by people who thought the language could use a bit of structure?

    As lawyers (and academics, apparently), we’re perfectly comfortable dealing with language at that level of abstraction. Once you learn to walk up and down the abstraction ladder, you’ll get it.

    Engineers can do us one better. Sometimes they use old things. That means they can walk up and down the novelty and obviousness ladders, too. I guess we don’t need 102 or 103 anymore. Engineers do like things to be definite, so we should probably hang on to 112.

  181. >>that a law, property, or rule cannot, in the >>abstract, be appropriated by any man;

    So, it is your contention that an information processing method performed by a machine such as the current one is abstract and appropriates a law, property, or rule?

    Can you articulate the appropriated law, property, or rule in this case?

  182. Nuijten?

    As I recall, Nuijten said satellites are not patentable (as they exist in a vacuum) or some other ridiculous nonsense.

    I don’t recall it saying anything about machine readable media being a machine or not…. You’re gonna have to give me a citation…

  183. Another example of lawyers overestimating their knowledge of the rules of English (and I say this as a budding lawyer myself). “The [which/that] rule is a fiction, invented during the 19th century by men who thought it would be nice to clean English up a bit . . . .” link to languagelog.ldc.upenn.edu

  184. Are you trying to blame an applicant for your decision to allow claims?

    Whether or not an applicant cites case law, it is still and always the examiner that makes the decision on allowing a patent to issue.

    Please do not compound the problem of allowing bad patents by trying to pass the buck on who should be held accountable.

  185. Why do you have an obsession with sockpuppetry?

    Is it really that difficult to just pay attention to content?

    Do you think that the content-light posts really have any effect that anyone is concerned about?

  186. Mercifully, the courts don’t usually rely on dictionary definitions for terms of art. Have a look at In re Nuijten, Les, and see if you still think paper with machine-readable instructions is a “machine” under the legal definition.

  187. Not trying to hassle you, but wouldn’t a proper cite then be the actual Surpreme Court decisions, rather than Curtis?

    I really have difficulty accepting any miscellaneous quotes from a second source that was published so long ago. Yes, the Supreme Court quotes from it, but one might assume that the Supreme Court has provided some diligence in making sure the quote fits (although, I know for a fact that this is not always the case!).

    Thanks.

  188. Your scenario does not include at least these elements:

    b) compiling a list of members in the selected field;

    f) publishing the profile of the selected member on a machine readable media; and
    g) allowing the selected member to interact with the profile.

  189. Abstraction is not how you get work done. Abstraction is how you make power point presentations and distribute work to other people.

  190. The claim has to be evaluated “As a whole”. You can’t dissect out pieces that are know individually and examine what is left. If you do that, the Wright brothers can’t patent wing warping… ropes, pulleys and bending wood were all known….

  191. I hope I understand correctly the implication of your post that bad caselaw can make for bad allowances–that can certainly be the case, I grant you, but do you have evidence that it WAS the case in this instance?

    I’m not just talking about 101, either, but say for instance a rejection based on 103.

    I personally believe that not only 101, but also 103 caselaw is nowhere near where it should be. There is certainly plenty of blame to go around the public sector

    To me, at first glance, this is a case where there is no caselaw preventing such a rejection, and simply a case where the examiner failed to diligently research and craft such a rejection, in an abdication of his or her duty to examine.

    Admittedly I haven’t looked at the prosecution history, and this is my knee-jerk reaction.

  192. That is not my position. The claims says nothing of paper. It says machine readable media. I say machine readable media is a machine.

    Anything I said about paper was just playing along with your assertion that a piece of paper is a machine readable media.

  193. So, the question is how can something be an abstract idea if the claims construed viewed in the light of specification are enabled and definite. If they were abstract, then you couldn’t practice the invention. What the SCOTUS is really striving to figure out is the whether or not you are entitled to the scope of the claims. Now, normally, when one goes about determining this one looks at other ways the invention can be practiced to determine if the claims are too broad.

    One does not go through a pyschotic process of a drug induced dream where one spews out sentences of abstraction and then ends with a conclusion that the claims are not eligible for patentability.

  194. Ned – While the Supreme Court said, for example, the Bilski claims were abstract and therefore not patentable, the Supreme Court DID NOT define abstract.

    Their ruling is therefore useless and clearly aimed at an outcome and not fairness or reasonableness.

  195. In the USA, do you have magazines for specific fields of endeavour, like lawyering, in which the content is generated by journalists, and do those journalists and magazines sometimes publish articles about individual lawyers. Do those articles include biographical information? Does the subject of the article ever get to see the published article?

    If so, why is this claim not only obvious but also old?

  196. Ned, why is that a change of information can be ignored? Can information be changed without using time, space, and energy? Is the information transformed? And, you don’t seem to want to answer my question about all the ee patents falling to your way of thinking because I can use a general purpose computer and some A/D converts and sensors to build almost any circuit.

    Why is this such a problem in modern ee patent application drafting? Because information processing is central to the patent applications.

    So, here we have something that is transforming information, we can practice the invetion, we know how to go up and down the abstraction ladder, and yet some how it is an abstract idea and we are going to carve up the claim element by element and not treat the claims as a whole.

    How is this patent law what you are going again?

  197. Simple, same answer I just gave to Les.

    Where do you think the three exceptions to patentable subject matter come from in the first place?  It comes from primarily Supreme Court decisions which Curtis describes.  But, Curtis is a reliable source on the topic.  His treatise is often cited by the Supreme Court.

  198. Les, I thought I quoted Curtis, who is often cited by the Supreme Court.  Where do you think the three exceptions to patentable subject matter come from in the first place?  It comes from primarily Supreme Court decisions which Curtis describes.  But, Curtis is a reliable source on the topic.

  199. you’re the guy who calls for the impeachment of judges who disagree with you, and frequently describes people who follow their precedential decisions as “psychotic”, right?

    Well played, IANAE. Of course, this is the sort of thing that causes the weak to pursue a life of sockpuppetry.

  200. By picking out a step and scoffing at it, you are demonstrating a fundamental lack of appreciation of how obviousness is, or should I say “should be,” determined.

    No, I’m not. I’m demonstrating my recognition that the “allowing” step in this claim is a friggin joke. I’ll ask you again: is the term defined? The claim literally reads on saving information about people on a computer and not barring any of those people from accessing and editing the information. The information could be accessed by a person sitting down at the computer and opening the file. There is no “password” input step recited or required by the claim.

    Likewise, in the prior art, such information would be available at meetings where members of the group would be allowed to change the information associated with their identities. This still happens by the way. Yes, in 2011. People still network in meatspace, face to face, and have productive/entertaining times without the help of a POWERFUL COMPUTER BRAIN.

  201. Les, of course. But we are not talking here about 101. We are talking here about 102/103. The printed page is transformed. But it varies from the prior art only in a way that has no patentable weight: it’s information.

    I can patented the printing press. I cannot re-patent the printing press for each new book. The information content of the output of the printing press has to be ignored for 102/103 purposes.

    Another way of putting it, is that the information content does not modify the printing step in any functional way. In fact, the lack of functional relationship between information content and the printed page renders the claim indefinite under section 112 as well.

  202. “Night, “abstract idea” is a defined term in patent law. Newman and you are using it in a lay sense. I think this is the real source of your angst.”

    Really? What is the definition? What is your source?

  203. Just to be clear, Les never stated that there was an eligible transformation in claim 1.

    Les’s position is that a piece of paper is a machine for 101 purposes.

    Given that fact, I have no idea why anyone would be interested in anything else that Les might believe.

  204. Regarding the publishing step, the specification describes it as,

    “By processing the information from the selected member (20) and using an appropriate software, a profile of the member would then be created, in an illustration shown in FIG. 4. The profile would be made available in a machine readable media, such as diskette, compact-disk, etc., or stored in a personal computer of the member, or stored in a central remote location for access by the profiled member, other members of the virtual community, and the public general. For example, the profile so created may be made accessible via the Internet.”

    My first impression is that the claim only requires the computer readable media to vary from the prior art media based on information content.

    If so, perhaps this step too can be ignored for 102/103 purposes.

  205. Maybe, but whats the field of endeavor? Being single?

    a) selecting a field of endeavor;

    Did Match.com compile a list of members in the selected field?

    b) compiling a list of members in the selected field;

    maybe….if the selecting, compiling and allowing can be done in any order including simultaneously…..

    c) selecting a member from the compiled list of members based on a preselected factor;

    d) obtaining biographical information about the selected member;
    e) processing the biographical information in a preselected format to create a personal profile of the selected member;
    f) publishing the profile of the selected member on a machine readable media; and
    g) allowing the selected member to interact with the profile.

    But I think QRZ.com is probably a better example.

  206. Nonsense Ned. Printing transforms a work piece, just a drilling a hole in something does. Look up the court ruling you are thinking of and reread it. You are misapplying what it said.

  207. The phrase seems perfectly clear to me.

    I hesitate to narrow it with examples. But if you insist, and without reading the specification, I assume it means putting it on a hard drive where it can be accessed by a large number or at least a plurality of people. Alternatively, it might mean putting it on a pluraity of CD ROM, or memory sticks that are then made available to the plurality of people.

    Why does that matter?

  208. Night, “abstract idea” is a defined term in patent law. Newman and you are using it in a lay sense. I think this is the real source of your angst.

    I thought I quoted you Curtis before. Now mind you, this is 1869. The law on this topic has been well established since at least then. Let me quote again from page xxix,

    “”[A] ‘principle,’ – meaning by this use of the term a law of nature, or a general property of matter, or rule of abstract science, – cannot be the subject of a patent, the doctrine, rightly understood, asserts only that a law, property, or rule cannot, in the abstract, be appropriated by any man; but if an inventor or discover for the first time produces a new effect or result, practically, by the application of a law, he may so far it appropriate that law, as to be entitled to say, that whoever applies the same law to produce the same effect or result, however the means, apparatus, forms, or arrangements of matter may be varied, practices or makes use of his invention, unless the variation of means apparatus, method, form, or arrangement of matter introduces some new law or great some new characteristic, which produces are constitutes a substantially different result. For, in all such cases, the peculiarity of the invention consists in the effect produced by the application of the natural law, as an agent; and this effect is not changed by the use of different vehicles for the action of the agent, provided there still is the same agent operating substantially in the same way, to reduce substantially the same effect or result.”

  209. Just reading through this thread is like listening to psychotic people talk. What in the world are you people talkign about? Abstract idea? How in the world has this worked its way into an analysis of a claim? We can walk up and down the abstraction ladder and practice this invention. Ergo, it is fine. The only concern may be whether or not they enabled the full scope of the claims.

    And, yes, pyschotic is the right term. You are using terms that have no real meaning and applying them to the external world in some fashion as if there is some meaning to your behavior. Sorry boys again you are at this nonsense. This abstract idea and physical step, etc. etc. nonsense has to end. Apply real tests that have meaning. See Newman dissent of Bilski. We need no more of this nonsense. That by the way is arbitrary.

    Something is not an abstract idea if the inventor has an enabling disclosure. I can practice this invention and yet it is an abstract idea. A machine is needed to practice this invention and yet it is an abstract idea. Quite a trick. Magicial claims.

    You boys are obviously shills with no regard to understanding the truth or trying to find real tests for patents.

  210. Yes, it does. But, for 102 purposes, the information content of the modification is irrelevant. Therefore, everything in the claim is an ingorable mental step or an old physical step.

  211. It really is criminal the way you guys are trying to obfuscate matters and intentionally mislead people.

    NWPA, you are not new here.

    This is what Shillers do. It is on purpose that the correct meaning is obfuscated and people are lead away from that meaning, because that meaning is not what the Shillers want.

  212. Have you no care for your own soul?

    Refresh my memory – you’re the guy who calls for the impeachment of judges who disagree with you, and frequently describes people who follow their precedential decisions as “psychotic”, right?

  213. “II have to believe the that comment on this thread are not from well trained engineers. I was taught at 2 of the top 5 engineering schools in this country. Both schools drilled into me that you pick a level of abstraction to work at (and yes they used the word abstraction). You learn how to walk up and down the abstraction ladder. And that is how you get work done.”

    We know old man.

    “And that is how you get work done.”

    And eventually arrive at something physical which you can fairly call an invention. But you missed that last step. Played hooky did ya?

    “Have you no care for your own soul?”

    I sold mine out already :(

  214. “Engineers are taught to work with abstractions. That is what I was taught with that word, abstraction. Pick the level of abstraction and work at it.”

    We know old man. /yawn.

    “Claims should be evaluated on whether or not one skilled in the art can practice the invention. An inventor is entitled to the scope of the claims that are enabled.”

    They are old man.

  215. “It is the PTO that is responsible for all of the subsequent economic waste that might occur as a result of the allowance of this claim.”

    Surely not the corrupt, evil, caselawl you <3 relating to 101. SURELY NOT!

    See, you tard lawlyers have gone and fed up the patent system so badly I doubt if even you guys can save it from tearing itself down.

  216. II have to believe the that comment on this thread are not from well trained engineers. I was taught at 2 of the top 5 engineering schools in this country. Both schools drilled into me that you pick a level of abstraction to work at (and yes they used the word abstraction). You learn how to walk up and down the abstraction ladder. And that is how you get work done.

    The claims must be viewed in this same light. 112 is all we need to analyze these claims. Not 101. It really is criminal the way you guys are trying to obfuscate matters and intentionally mislead people. Have you no care for your own soul?

  217. All this comes down to abstractions. Read Newman’s dissent in Bilski.

    Engineers are taught to work with abstractions. That is what I was taught with that word, abstraction. Pick the level of abstraction and work at it.

    Claims should be evaluated on whether or not one skilled in the art can practice the invention. An inventor is entitled to the scope of the claims that are enabled.

    It is really that simple. This abstraction business from the Bilski SCOTUS is nonsense. Not patent law and there is no fair way to apply it as it is not a real test. Read the Bilski dissent of Newman where she explains this very well.

    Almost all of the comments in this thread are shear nonsense. The tests are simple as laid out by Newman. You guys should be ashamed of yourselves for writing and thinking such nonsense.

  218. How about “agenda”, which is technically plural of “agendum”? Maybe that’s too far gone for reform? Viva singular “data”…this is English not Latin, we don’t have to talk the way they did in ancient Rome.

    But the “which”/”that” error is unforgivable. Lawyers gravitate to “which” because it sounds more dignified. I am looking forward to a claim construction that goes sour for plaintiff because of the distinction.

  219. Get serious, M’beams, I was not asserting that the claim requires a password. I was responding to your scoffing at the “allowing” step, and I was trying (futilely as it turns out) to enlighten you that such steps are a part of virtually every computer program, which is why I introduced the hypothetical pseudo-code. Just trying to teach a pig to sing, that’s all. And it’s not working out very well.

    BTW, I asked you what’s wrong with the “allowing” step. Still waiting for an answer. Would love to hear your opinion.

    Your answer would be, I am sure, that the step is “obvious.” I would agree. But the fact that a step is obvious is irrelevant, so long as 103 still says “subject matter as a whole,” and it still does.

    Similarly, the fact that an element in a machine claim is known is irrelevant to the obviousness analysis. It is the combination, and only the combination, of the elements or steps, considered within the context of the commonplace knowledge of the art, that determines obviousness.

    The only time the obviousness of any single step or element is relevant is when the step or element is determined to be NOT obvious. In that case, the entire claim is, ipso facto, not obvious and the further analysis is not required. Next claim.

    By picking out a step and scoffing at it, you are demonstrating a fundamental lack of appreciation of how obviousness is, or should I say “should be,” determined. But, sadly, your misconception seems to be endemic. It is certainly endemic among examiners.

  220. The posts in this thread illustrate very well why the “abstraction” test is outrageous. Nearly psychotic swirls of abstractions are spewed out about some test called the “abstraction”.

    Look. It is method that operates on information. Period. Patent eligible.

  221. I would be shocked if there weren’t printed publications describing Match.com’s “methods.”

    That said, 103 is a slam-dunk regardless. It really is baffling that this wasn’t ended on Summary Judgment. Somebody blew it here.

  222. IIRC, the government brief in Prometheus would ignore, for 102/103 purposes, any “step” in a claim that did not modify a physical act. That is everything in the claim here except perhaps the publishing step.

    Now the publishing step itself has to be old.

    The more I think if it, the more I like the government brief in Prometheus.

    With the government’s brief in mind, a quick request for reexamination might throw a big monkey wrench into this case.

  223. Agreed. In reading the cases and Curtis on patents, I have come to understand that an abstract ideas is something that does not actually produce new physical result.

    Now, printing words on a paper may qualify as something physical. But if significance of the modification is in the meaning of the words, I think the transformation remains abstract.

  224. the allowing step is implemented as

    And you know this because ….? Does the specification define the term? Please share.

    Not that it makes any difference whatsoever when evaluating the incredible obviousness of the claim, but the claim literally reads on saving information about people on a computer and not barring any of those people from accessing and editing the information. The information could be accessed by a person sitting down at the computer and opening the file. There is no “password” input step recited or required by the claim.

  225. Babble–

    I just can’t bring myself to believe that yours is a serious question–but to the extent that it might be, my initial response was precisely the same as that of Mooney.

    Unfortunately I don’t have the time right now to give it any more thought.

  226. OK, I’ll take the bait . . . said the fly to the spider.

    My point was the allowing step is implemented as what is often referred to as a conditional step by the programmers, as per the pseudo code example.

    Who cares what it would look like? Well, the expert explaining it to the jury would care. And then the jury would. And then Twitter’s bankruptcy attorneys would. And then Agarwal’s wife’s divorce attorney would, as she explains to the divorce judge how judgment proceeds are marital property. Ripple effect.

  227. I would think Cybersource would kill this under 101. Like Beauregard (sp?) patent claims, simply tying a machine in at the end shouldn’t be enough.

  228. Now, answer the question:

    Can you cite some court ruling that indicates that as far as patents are concerned simple machines are not machines?

  229. Paper with allegedly machine readable instructions on it?

    After reviewing a definition of machine, I would have to say, Yes:

    e (1) : an assemblage of parts that transmit forces, motion, and energy one to another in a predetermined manner (2) : an instrument (as a lever) designed to transmit or modify the application of power, force, or motion

    link to merriam-webster.com

    …since a piece of paper with machine readable instructions on it would be designed to modify the application of power (e.g.,change the state of memory cells in the machine that reads it).

    For that matter, a piece of paper with a note addressed to a Congressmen, for example, would also meet the requirements of that definition.

  230. In pseudo-code it would be something like:

    Who cares? What would it look like it in Egyptian hieroglyphics? Who cares?

    Is a conditional step generically obvious? Of course.

    Where is a “conditional step” in claim 1?

    I’m allowing you to respond to my comment.

    LOL.

  231. What’s the problem with the allowing step?

    In pseudo-code it would be something like:
    If inputpassword = password, then goto interaction routine else go to getlost routine.

    Virtually every conditional step of a program is an “allowing step” and any computer expert above the level of high school computer sciences would take the stand and testify to that.

    So where’s the LOL?

    Is a conditional step generically obvious? Of course. But if you guys are looking at the step (or any step) in isolation from the entire claim and concluding that it renders the claim obvious, then you don’t understand 103.

  232. I have no opinion as to whether a piece of paper is a machine.

    Except that paper is “computer-readable media” so you’ve already expressed your opinion on that subject, Les.

    And you haven’t answered my question: what compositions of matter do not qualify as “machines” for purposes of the machine-or-transformation test, and why? Otherwise, simply admit that your belief is “any composition of matter is a machine for purposes of the machine or transformation test.”

    Can you cite some court ruling that indicates that as far as patents are concerned simple machines are not machines?

    Nice try. You’re the one arguing that paper is a “machine”, Les. You think case law supports that viewpoint? Just say so, Les. You see, you’re doing that thing that the blog trolls here do where they make silly comments and then they refuse to stand by them. Hence the sockpuppets.

    Is “paper” a “machine”, Les?

  233. Please explain the point of this rant.

    Can you cite some court ruling that indicates that as far as patents are concerned simple machines are not machines?

    If you can, the ruling would be just as absurd as a ruling that says a method isn’t a method unless it refers to a machine.

    I have no opinion as to whether a piece of paper is a machine.

    Nevertheless, I assert that a computer readable media or medium is a machine.

  234. I would note that the majority of “native English speakers” in the United States are illiterate by any meaningful measure.

  235. BTW, its hard to have too much sympathy for defendants that get all the way to trial on claims like this without having promply filed a reexamination back when they were first threatened with the patent. Even if the PTO takes too long, even an intial claim rejection in a rexamination might give th judge some encouragement to more seriously consider a grant of summary judgment?

  236. Like MM I also LOVE the “allowing” step.

    It is the PTO that is responsible for all of the subsequent economic waste that might occur as a result of the allowance of this claim.

    The CORE FUNCTION of the PTO is to REJECT unpatentable claims. Anybody can apply for anything, but it is the PTO’s DUTY to examine and reject if indicated–a duty which in this case they have failed to discharge successfully.

    Yet more evidence of the lack of value afforded by the PTO.

    Too bad the PTO can’t be sued under a theory of detrimental reliance. What if somebody submitted a claim they honestly believed was a good claim and the PTO granted it, only to have it invalidated at a later date for some reason the PTO SHOULD HAVE caught earlier if it had been doing its job?

    The PTO bears NO BURDEN WHATSOEVER for the losses resulting from its failure to successfully discharge its “official capacity”.

    Not that Agarwal in particular deserves anything but the incurring of damages and ignominy at the best, and depending on his precise role and knowledge in the drafting and filing, possibly even sanction in his capacity as a registered patent attorney.

  237. What is less abstract about this claim than Bilski’s actual claims, which the Supreme Court unanimously agreed were abstract? [Even though the Supremes could not agree on how to decide “abstract” for anyone else.]

  238. MM you have exposed your ignorance

    Only if “your ignorance” is your new nick-name for yourself.

    We’re talking about patents, Les, remember? This is a patent blog. Remember the machine-or-transformation test discussed at length in Bilski? Try to remember the context.

    Is a piece of paper a “machine” Les?

    If “a piece of paper” and “an inclined plane” are machines, what compositions do not qualify as “machines” for purposes of the machine-or-transformation test, and why?

    Thanks, Les. Let us know how your foot tastes.

  239. “Twitter’s proposed jury instructions”

    Hard to read this phrase without a slight chuckle. Part of my brain was expecting something more like

    “101 fail. link to google.com #Bilski #Trolls”

  240. COD

    Stay in there, dude. The geeks and media-heads have been butchering our English for generations. “Data” is plural, and only plural. Same for “media.” The dictionaries are written by wimps who refuse to stand their ground.

    BTW, speaking of ungrammatical lawyers, how about Twitter’s proposed jury instruction?

    “Methods which can be performed mentally, or which are the equivalent of human mental work, are abstract ideas which cannot be patented.”

    Which “which” is which? Whoever wrote this “sentence” wouldn’t know a nonrestrictive clause — or how to handle one — from a penguin pooper-scooper.

    But my guess is that you have restricted your grammatical criticism and “native English” jab to Dinesh Agarwal because his name suggests he is not from the Heartland. Good on ya’, dude! Send your CV to U.S. Customs and Immigration — you’re just the kind of bigot they’re looking for.

  241. a machine readable media is a machine

    A piece of paper is a machine?

    LOL.

    inclined plane is a machine.

    The txxbxggxrs never cease to amaze.

    Why not just cut to the chase and admit that you believe that “every composition is a machine,” Les? Because there’s no way you can defend the above statements without eating your own foot.

  242. Not that method claims are a second class of claims an actually require a “machine” to be eligible, but to answer your question here:

    f) publishing the profile of the selected member on a machine readable media;

    If nothing else a machine readable media is a machine, just as a lever or inclined plane is a machine.

  243. Where is there any “machine” [versus a purely mental or pencil & paper] method in claim 1? And isn’t claim 2 just a post-method display of end results?
    ————
    Trolls can sucessfully make a lot of easy “settlement” money from most defendants on “paper” patents [or even clearly invalid patents] because too many judges will not grant timely summary judgements on anything and will force defendants into a Hobson’s choice of costly full blown ligigation & trials if they do not settle, knowing that most of them will.

  244. Clearly does not pass 102.

    Or 103.

    Creating groups of people based on some shared feature of those groups, listing the people in those groups, publishing the list including various information about the members, and allowing members to modify the information in the lists is centuries old, at least (I’m sure Mr. Agarwal was very very careful about disclosing all the prior art that he was aware of, though).

    Using a computer to assist in managing the information is obvious as of the date that computers were known. As everyone knows and has known for half a century, at least, that is what computers do.

    This was an incredibly poor job of examination by the USPTO and more proof (as if any was needed) that the presumption of validity is a sad joke on the American public, particularly in the area of computer-implemented gxrbxge.

    My favorite step in the claim is the “allowing” step. LOL.

    I completely agree with the notion that merely adding “a computer” (including an output display) to an otherwise ineligible series of mental steps should not be enough to confer patent eligibility on a process. This “invention” seems to me to be the kind of crxp that State Street was designed to encourage. It also seems to be the kind of abstract crxp that Bilski was designed to destroy.

    In any event, there is no doubt that the claims are going up in flames and if there’s any justice Mr. Agarwal will be on the hook for a huge portion of Twitter’s attorneys fees.

    Judge Morgan denied Twitter’s motion for summary judgment of invalidity under 35 U.S.C. 102 & 103

    There are three possible explanations for this: (1) Twitter’s attorneys stink; (2) Twitter’s attorneys are being prevented from making certain arguments for fear of damaging their own patent portfolio; or (3) Judge Morgan is smoking crack.

  245. As far as I can tell, a lot of the controversy over some need for stricter 101 requirements is driven by an inability (or past inability) of PTO examiners to reject claims like this under 102/103. Unfortunately, if an examiner doesn’t do, it then falls to a jury, which is likely to be composed of mostly non-technical individuals who can be bombarded and confused with technical testimony from “experts”. Given that, obviously defense counsel should raise 101 when faced with a claim like this.

  246. plural me·di·as
    Definition of MEDIA
    1
    : a medium of cultivation, conveyance, or expression; especially : medium 2b
    2
    a singular or plural in construction : mass media b plural : members of the mass media
    Usage Discussion of MEDIA
    The singular media and its plural medias seem to have originated in the field of advertising over 70 years ago; they are still so used without stigma in that specialized field. In most other applications media is used as a plural of medium. The popularity of the word in references to the agencies of mass communication is leading to the formation of a mass noun, construed as a singular . This use is not as well established as the mass-noun use of data and is likely to incur criticism especially in writing.

  247. Cranky–

    I caught that, too, and was wondering if it was Agarwal himself who drafted the claims.

  248. “a machine readable media”? “a” implies singular; “media” is plural. You wouldn’t say “a televisions” or “an automobiles”. The claim thus fails 112. Is the attorney who wrote this a native English speaker? What about the examiner who examined it?

  249. “Like claim construction and obviousness, patentable subject matter is treated by the courts as a question of law. However, unlike claim construction, the appellate courts have never held that it must be the judge who decides section 101 issues.”

    However, like obviousness, the appellate courts have held that it is the trier of fact who decides the factual predicates underpinning the ultimate legal issue.

  250. Passes 101.

    Clearly does not pass 102.

    For example, I’m pretty sure QRZ.com has been performing the claimed method since at least the early 1990’s

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