Guest Post: Where do Processes of Nature End and Processes of Human Invention Begin?

The following excerpt comes from Professor Robin Feldman's forthcoming Harvard University Press book Rethinking Patent Law which will be released in 2012. The excerpt is reproduced with permission from Harvard and Professor Feldman.

Looking from the perspective of preemption can be helpful in developing an approach to many of the questions generated by the emerging field of personalized medicine. Personalized medicine is an area of applied research devoted to developing tests that operate on biological and clinical data from a patient (e.g., protein levels, genetic mutations, medical history) to provide diagnoses, prognoses, and treatment regimens specific to the patient. Cases arising in this field include LabCorp, which concerned correlating elevated homocysteine levels with certain deficiencies, and Prometheus, which concerned determining metabolite levels after administering a particular class of drugs for gastrointestinal disorders and adjusting the dosage of the drug based on the metabolite levels.

As discussed earlier, the Federal Circuit's decision in Prometheus seemed to suggest that most life science inventions would satisfy the requirements of patentable subject matter, while the PTO's application of Prometheus could lead to the rejection of numerous inventions in this arena. Neither extreme is necessary if one focuses on preemption of laws of nature and natural phenomena as the primary concern.

For example, LabCorp was a relatively simple application of personalized medicine. It involved one biomarker and a reasonably straightforward correlation for treatment. In contrast, most personalized-medicine diagnostics are developed using whole genome expression or sequencing arrays to identify hundreds or even thousands of biomarkers that can be used to diagnose a specific disease state. The machine learning algorithms used to identify these markers do not operate on statistical concepts as simple as linear correlation, which for some of us is complicated enough. Machine learning algorithms employ statistical models to identify different combinations or "patterns" of markers that correlate with a specific disease state. Usually these markers are selected and statistically modeled to compensate for human genetic and environmental variation.

Thus, most personalized-medicine programs are tremendously complex compared even to logistic regression and other simple forms of statistical analysis. They are not simply a reflection of a natural phenomenon; they are an interpretive model of nature. Nor are they analogous to or preemptive of human thought. It would be quite improbable for a physician to be able to sit down with a pen and paper and work out a diagnostic by applying a machine learning algorithm or logistic regression to hundreds of biomarker levels.i

Consider the first person who discovered that human chorionic gonadotropin (hCG) levels indicate pregnancy when they are elevated above a certain level, and assume that the inventor also created a home pregnancy test for measuring the hCG. One could think of this as a simplistic personalized diagnostic device in which a particular nongenetic marker is measured to identify a state of health. The inventor could certainly patent the kit, which would consist of the physical device with its particular components. The inventor should not, however, be allowed to patent the process of testing human urine for an elevated level of hCG and correlating that level with the state of pregnancy. The core of the invention, the fact that hCG above a particular level confirms pregnancy, is a simple reflection of nature rather than an interpretive model. To understand the difference, compare the process of measuring one marker by looking for a simple level to the average personalized invention. The modern personalized invention may utilize hundreds of biomarkers analyzed by means of statistical patterns. Even if the complex process involved in identifying the relevant biomarkers yields a limited number of biomarkers to consider for a relevant patient, that information does not relate directly to anything. For example, with a personalized medicine invention involving only a few biomarkers, each of those markers generally has confidence intervals assigned to indicate the likelihood that the presence or absence of a factor or the particular level of that marker will translate into a particular diagnosis or successful treatment. Once biomarkers are collected from a relevant patient, they must be processed by statistical modeling to determine how the various factors and confidence levels for this particular patient should be interpreted. The complexity and variability of individual humans ensures that a model like this can never be a simple reflection of nature. Rather, it is no more than an interpretation of nature, albeit one that is extremely important in the treatment of a specific disease.

In contrast, the inventor of the method of measuring hCG is looking at only one marker, and it is a marker that is elevated in the same range for pregnant women in general. Thus, it requires no complex modeling and is a direct reflection of a phenomenon of nature. As a result, it would not be patentable subject matter on the grounds that the core of the invention is no more than the discovery of a natural phenomenon.

The hCG invention should also fail on the grounds that performing the test is no more than a mental step. The method does not require complex computer analysis to interpret the data; it requires observing a particular level of a substance and reaching a conclusion from that level. Preventing human beings from looking at information and concluding something threatens to preempt simple thought.

Personalized medicine, with its marriage of biology and computer technology, provides a wonderful opportunity to understand and tease out some of the threads of patentable subject matter. These inventions demonstrate how early misconceptions about the nature of computer programs and the nature of mathematics are causing problems in modern case law.ii

Part of the difficulty can be traced to confusion between the content of something that is being expressed and the language in which it is expressed. For example, we know that laws of nature are not patentable. Some of these laws are familiar to us in the formulaic language in which we normally see them expressed. Most people, for example, would recognize one of Einstein's laws of physics expressed as E = MC2. One could express that same law in prose, however, rather than formulaic language by explaining the way in which matter and energy are interchangeable.

The choice of language is irrelevant.iii We disallow patenting of E = MC2 not because it is expressed in mathematical form but because it represents one of the building blocks of scientific exploration and endeavor. Patenting that law would preempt scientific exploration by occupying a basic concept.

In addition to laws of physics, other things can be expressed in formulaic language. Expressing something in formulaic language, however, does not mean that what is being expressed is a law of nature. Thus, the fact that computer programs are expressed in a formulaic language that looks somewhat like math to the layperson does not mean that the concepts underlying a particular program are analogous to math, let alone analogous to a law of nature. Two things expressed in the same language or the type of same language are not necessarily analogous. Comic books and the Constitution are both expressed in the English Language, but they are hardly analogous. Our focus should remain on the content of what is being expressed and on the preemptive effect that might result from patenting that type of content.

Some unfortunate language in the Supreme Court's Diehr opinion, which flows from this misperception, makes it more difficult to properly separate software claims that should be patentable from ones that should not. In searching for logic to explain why the rubber-molding invention at issue was patentable while other apparently similar inventions had failed, the Court made the following comment: "A mathematical formula as such is not accorded the protection of our patent laws, and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment."iv

Other courts have jumped on the language to declare that so-called field of use restrictions cannot save software patents.v Even the recent Supreme Court opinion in Bilski wandered into the same territory when referencing its earlier decision in Flook:

Flook established that limiting an abstract idea to one field of use . . . did not make the concept patentable. That is exactly what the remaining claims in petitioners' application do. These claims attempt to patent the use of the abstract idea of hedging risk in the energy market and then instruct the use of well-known random analysis techniques to help establish some of the inputs into the equation. Indeed, these claims add even less to the underlying abstract principle than the invention in Flook did, for the Flook invention was at least directed to the narrower domain of signaling dangers in operating a catalytic converter.vi

It is true, as a general matter, that if one were to claim a law of nature, the claim would not be rendered patentable by limiting use of that law of nature to a particular field. Thus, for example, an inventor could not save a claim to all uses of E = MC2 by limiting the claim to "all uses of E = MC2 in the construction field."

Sliding the analogy over to software, however, involves logical errors. The logic that appears to have been used is the following. Computer programs are mathematical formulas, and mathematical formulas are laws of nature. We know that laws of nature cannot be rendered patentable by limiting their application to a particular field of use. Computer programs, therefore, cannot be rendered patentable by limiting their application to a particular field of use.

This sequence contains a number of logical errors. Computer programs may be expressed in a language that looks like math, and some do involve calculations, but they are not necessarily analogous to mathematical formulas. Most important, they are not analogous to natural laws just because both are expressed in formulaic languages. One must look to the content of the computer program and its potentially preemptive effect to determine patentability.

As described earlier, the term "algorithm" in computer science means a series of steps performed on input data by a computer. This process may or may not raise preemption concerns. Some computer "algorithms" are based on properties inherent in types of input and output data. Such broad, generic algorithms, which can be used on a variety of types of input data, may raise threats of preemption. In other words, if an inventor asks for a patent on a software program that works with whole sets of numbers or entire types of data, such a patent would not be patentable subject matter. Particularly in light of the bargaining potential that would come with such a grant, the patent would risk tying up entire types of data rather than constituting something applied.

This does not mean that all software is unpatentable. Claims to programs that are applied to a specific type of data in the pursuit of particular types of outputs do not present the same level of preemption threat. For example, a personalized medicine algorithm (i.e., series of steps) that employs a specific type of statistical model using a fixed set of markers to produce a very specific diagnosis would not threaten to preempt other methods of performing the same diagnosis that use different markers or novel types of statistical models. Such an invention should be patentable.

Computer programs may be many things, including methods of creating useful models of the world around us, methods of providing interpretations of information, and methods of sorting information. When methods of creating a particular type of model are described at a very general level, they may threaten to preempt the broad activity of exploration. However, when claimed at the level of a specific method of sorting a particular type of information for a particular pursuit, they should constitute an applied invention. Such specificity is the hallmark of what separates unpatentable abstractions from applications of those abstractions in the useful arts in a way that is worthy of patent protection.

* * * * *

i One scholar has suggested that even LabCorp could have survived as patentable subject matter if the claims drafter had chosen a narrower description. See Patricia Dyck, "Post-Bilski Personalized Medicine: At Home on the Range" (forthcoming) (manuscript on file with author) (presenting an empirical survey of the most frequently claimed biomarkers in personalized medicine and discussing problems in allowing claims for sets of biomarkers that are small and not limited to the diagnosis of a specific disease state or condition).

ii I have discussed some of the misconceptions described here in the context of patenting genes. See Feldman, "Whose Body Is It Anyway?" 1400–1402.

iii One could easily argue that all math is invented. It is a human-made method of imposing order and structure on the natural world. For an interesting and accessible discussion of Wittgenstein's view that all mathematics is a human invention and various responses to that argument, see Ludwig Wittgenstein, Wittgenstein's Philosophy of Mathematics §3.1, http://plato.stanford.edu/entries/wittgenstein-mathematics.

iv Diamond v. Diehr, p. 191 (citation omitted).

v See, e.g., In re Bilski, p. 957 (noting that mere field-of-use limitations are generally insufficient to render an otherwise ineligible process claim patent eligible).

vi Bilski v. Kappos, p. 3231.

429 thoughts on “Guest Post: Where do Processes of Nature End and Processes of Human Invention Begin?

  1. Back before ’52,

    Sounds like a Conflater’s excuse to me, while at the same time recognizing that the law (the current actual real law) defeats what Malcolm is trying to do with his dissection.

    The tone of the comment regarding government being “forced” to a 102 analysis every time seems odd; almost as if to be saying that “extra” work is being required (which is misleading), as all patent applications must face that hurdle. It’s as if the poster is trying to morph the wide, open, and welcoming gates of 101 into being a much more narrow camel’s eye.

    That is not the intent of 101. Never has been. Such morphing is ultra vires, and feeds into the discussion below by The Question No One Will Answer. Such reveals an underlying agenda, an underlying bias against patenting.

    It really is simple: Thous shalt not conflate.

    Also sounds like you think the ’52 act in reaching better clarity was a step backwards. Only someone who wants conflation (for whatever philosophical agenda) would think thusly.

    Your adoration of Stern here is misplaced, because if Stern is arguing for conflation, he is arguing for less certainty in the law. Conflation benefits no one.

    Any post here that can be categorized as making conflation more desirable is D_ead O_n A_rrival. You would be better off simply not making that argument in the first place.

  2. IBP, what the issue really is here is whether a claim that not novel except in an added mental step (calcualtion?) that (and this is what is important) uses the old steps as inputs (information gathering) is patentable.

    Back before ’52, we did not have as definition of invention, nor a separation between what is now 101 and 102. We viewed the topic as a whole and did not have to neatly divide them up.

    The new statutory framework is somewhat obscuring the and making difficult that which was easy. Is the claim patentable? “Stern’s” brief argued that one cannot easily divide invention, novelty and patentable subject matter into separate buckets, and concluded, just as does Malcolm, that the Promethues claims are invalid under both 101 and 102, for essentially the same reasons. The government would divide the issues, which forces a 102 analysis every time nominal statutory subject matter is attached.

    Also, I think Rich/Frederico, or one, of them got cute in the ’52 Act by dividing 101 from 102, and then not including 101 in the invalidity defenses to a patent. This “minor” point has never been raised at the Supreme Court. But clearly if the change was not a mistake, someone clearly thought all validity issues could be handled under 102/103/112/251 (the listed inclusions in 282). All.

  3. “Myriad, CAFC:

    “Myriad’s method claims directed to ‘comparing’ or ‘analyzing’ DNA sequences are patent ineligible; such claims include no transformative steps and cover only patent-ineligible abstract, mental steps”"

    Malcolm, executing mental steps, whether via a microscope, or looking through a camera lens, does not prevent anyone from thinking about those steps, or thinking any thought whatsoever. Thus you have failed not only to respond to empty wagon above but also failed to prove why the law should be changed to allow dissection of mental steps.

  4. Answering with a Non Sequitur is no more a legitimate answer than asking a straw man question is a legitimate argument. But back to to the original point, your proposition to dissect, ignore, or not give patentable weight to mental, non novel steps in 101, 102, or 103 has no logical reason or benefit to society.

    For example you have NEVER shown that any patent has ever prevented anyone from thinking any thought.

    EVER.

    Earlier I told you I read prometheus claims and nothing prevented me from doing the claims in my head or thinking about “ANY” of the steps in whole or part.

    I just read all the Myriad claims and nothing prevented me from doing them in my head or thinking about “ANY” of the steps in whole or part either

    Thus your entire proposition has no rational, logical or legal reason for existence whatsoever and is considered dead on arrival.

  5. Fine 6. I’ll just claim a method with 1 desk chair. Launch it into space and into the sun. Its hydrogen (and carbon!) will fuse in the sun. Then I will capture the sun’s energy through a solar panel, a tiny fraction of which will be from my desk chair.

    And all chemical bonds break down in a plasma by definition. A plasma is just a bunch of free ions.

  6. OK, then. Abstract is

    1) not machine, article, composition or process; or
    2) no specific utility.

    What then was abstract about the Bilksi claims? They comprised a series of steps, nominally physical. They had a specific utility. Hedging risk in energy marking trading.

    What was the problem? (And btw, if you answer the question, you will be among the first to do so. I have tried to engage AI and his fellow travelers in a serious discussion on this is for quite some time to no avail.)

  7. The answer is that some people oppose patents, and will work to limit them in any way, shape or form.

    It is the “nose of wax” that Stevens said not to touch (just before he gave it his own personal twist).

    You can call this a Philosophical Jihad.

  8. IBP

    Necessarily performed only in the human mind, or capable of being performed in the human mind?

    This is a claim construction issue. My analysis concerns the situation where the [newthought] limitation is met by an infringer who thinks the new thought, exactly as asserted by the patentee’s in LabCorp., Prometheus, Classen, Myriad, etc.

    All human minds?

    Any human mind. The prohibition on patenting mental processes (effectively or literally) is not limited to types of human minds (I’ll leave it to you to teach us the different kinds of humans minds, as it was your question which presented the issue).

    What is “the human mind”?

    Depends on what you mean by “is”, IBP. LOL. Look up “human mind” in the dictionary. I’m sure the definition will work for me.

    Is it merely a processor, or is it also a repository of data?

    Doesn’t matter. The mental step could be a step of processing information or storing it.

    Is cognition necessarily required? Is self-awareness necessarily required?

    Claim construction issue. In most cases, I would assume that a step of thinking a new thought will requre cognition/self-awareness, but if a patentee wanted to assert the mental step more broadly, they could do so.

    How simple can the step be?

    There is no limit to how simple the step can be.

    These are only some of the questions you leave unanswered

    Nobody had ever asked those questions before and, quite frankly, the questions were pretty fxxing lame and seemed to be asked for the sake of creating the illusion of ambiguity where there really isn’t any.

    For instance, in the case of Prometheus’ claims and LabCorp.’s claims, the patentee was crytal clear about the fact that their claims were directed to [oldstep]+[step of human thinking new thought about result of old step]. These are the claims I’m referring to, the claims that you have already agreed can NOT be eligible, valid and enforced. The claims that only a few industry/txxbxggxr shills even pretend to defensible.

    I would like to see you fold at least these types of concepts into a more concise statement of your proposition.

    My proposition can not be presented more concisely than I have already presented it, IBP: claims in the form [oldstep]+[newthought] can not be eligible, valid and enforceable without effectively granting patents to the new thoughts themselves.

    What could be more concise than that? As it stands, it’s an an irrefutable proposition.

    you have not demonstrated that it is LEGALLY a claim to the “mental step”.

    That’s not for me to “demonstrate,” IBP. That’s for the courts to decide with a holding directly on point, where the question is asked and answered. What I have demonstrated is that my proposition is logically bulletproof and legally grounded in the uncontroversial and unquestioned principle (supported by numerous Supreme Court and CAFC decisions, including some that reached the wrong outcome) that patents can not be used to protect “new thoughts”, “mental processes” or “abstract ideas.”

  9. “The law” (as you put it) of patent eligibility, obviously is more than merely the text of 35 USC 101.”

    Inviting Body Punches, again, you are avoiding the question. I am asking

    Why is there a need to change 101?

    Your reason that the ” law” at 101 “is clearly not easy to understand” and apply, simply is not true.

    We are not talking about the entire gambit of patent law here. Simply 101.

    Your implication that no one understands what a law of nature, natural phenomena, or abstract idea is, is quite honestly, ridiculous on its face.

    Anyone with at least an 8th grade education that included a general science course knows what a law of nature, or natural phenomena is.

    Likewise an abstract idea is just that, a mere idea within the mind/imagination. Everyone knows this as well.

    As far as compliance with 101 is concerned it is as simple as the law itself.

    1. Pursuant to § 101, an invention is patentable if it falls within one of four categories of invention: processes, machines, manufactures, or compositions of matter. And it is not a law of nature, natural phenomena, or abstract idea.

    Simple! 101 is done.

    Which bring us full circle.

    Why is there a need to change 101?

  10. I will repeat the request:

    Repeat it all you want, douchebag. To the extent your question makes any sense at all, it’s been answered.

  11. I will repeat the request:

    show a single case where the courts have held that any patent has prevented the thinking of any thought.

  12. sockie: show a single case where the courts have held that any patent has prevented the thinking of any thought.

    Myriad, CAFC:

    “Myriad’s method claims directed to ‘comparing’ or ‘analyzing’ DNA sequences are patent ineligible; such claims include no transformative steps and cover only patent-ineligible abstract, mental steps”

    Man, this blog has dxmbxst trolls.

  13. anon–

    Discourse within legal boundaries leads to legal results.

    I keep trying to corral the discussion to keep it within legal boundaries, but of course that is difficult.

    Now that we have Prometheus before the Supreme Court, it is doubly difficult, as they are famed for deciding on a policy basis.

    Of course my contribution also arises from a philosophical basis, I freely admit that.

    My own basis includes principles such as patents are generally good and do promote progress, granted patents should be strong, outcomes of patent disputes should be reasonably predictable in advance, patent applicants should be held to a high standard of disclosure, the adjudication of patent disputes should be efficient, etc..

    None of my bases derive from, or relate to, any particular “class”, or “species” of patent, however.

  14. And notwithstanding any of that, there is that nagging “claim as a whole” issue, which you seem to gloss over by suggesting that a claim in your form is “effectively” a claim to the “mental step”.

    AFAIK, you have not demonstrated that it is LEGALLY a claim to the “mental step”.

    But ignoring that for the moment, I’m eagerly awaiting your response to my earlier questions.

  15. Come on Question, we all know about statutory law, approaches to statutory interpretation, common law, etc..

    Sorry IBP, that is a completely unwarranted assumption. Often it is that the unerlying law is ignored and trampled to suit a particular philosophy, and that is the actual crux of the ongoing disagreements on these threads.

    Without recgonizing that what is actually being debated are different underlying philosophies, trying to come to terms with the actual law (statutory as modified by judicial), there simply will be no agreements and plenty of talking past one another (or as might be commonly known – another typical day here at the O).

  16. Wow, now we can get somewhere.

    Necessarily performed only in the human mind, or capable of being performed in the human mind?

    All human minds?

    What is “the human mind”?

    Is it merely a processor, or is it also a repository of data?

    Is cognition necessarily required?

    Is self-awareness necessarily required?

    How simple can the step be?

    These are only some of the questions you leave unanswered, and only some of the questions which must be addressed before the second question can even be approached.

    If you are willing, I would like to see you fold at least these types of concepts into a more concise statement of your proposition.

    The statement in its present form is incapable of supporting any even remotely efficient analysis.

  17. Come on Question, we all know about statutory law, approaches to statutory interpretation, common law, etc..

    “The law” (as you put it) of patent eligibility, obviously is more than merely the text of 35 USC 101.

    Instead of addressing merely the text of 101, I was addressing why “101 thinking”–that is, the way we conceptualize, analyze, synthesize, and communicate ideas about patent eligibility–needs to change.

    Some of the current difficulties are revealed well in your post:

    What is a “law of nature”?
    What are “natural phenomena”?
    What are “abstract ideas”?

    It is clearly not easy to understand and apply.

    If it is more acceptable to you, it could be stated that problem is one of how to analyze and determine compliance with 101, which exercise is itself part of the law of patent eligibility.

  18. a common reaction to reading posts by 6. The remedy is to just realize that 6 is hallucinating while he posts. He has no clear grasp of the laws at hand and is largely irrelevant to any real discussion.

  19. [shrugs]

    What does your acknowledgement mean?

    Do you understand what it is that you are acknowledging?

    I don’t think so, else, you would not post the banalities that you do.

  20. Anything else?

    Only the dozens of questions spread across the thread universe that you have never answered.

  21. MM,

    Why do you step in the same footsteps that bring the same questions that you never answer?

    The minute I read your post (déjà vu) I recall Actual Inventor’s simple and incessant request of you: show a single case where the courts have held that any patent has prevented the thinking of any thought.

    And this is with the law of 101 as is. And since it is you that wants the law to be changed, it is up to you to prove the point (so stop asking others to provide cites).

    If the situation is as calamitous as you harp on, it should be easy for you to show this danger. If, on the other hand, you are merely being a chicken little and screaming that the sky is falling – when it is not – kindly stfu already.

  22. U.S.C. 35 101 is the “law”.

    So it’s not what, as you say, current thinking permits.

    Its what the “law” permits.

    Hey, sockie, does patent law allow patentees to prevent people who are engaging in perfectly legal acts from thinking certain thoughts while engaging in those acts?

    Let me know. And provide a cite that’s on point and unambiguous. Thanks.

  23. With all due respect IBP, you ducked the question.

    U.S.C. 35 101 is the “law”.

    So it’s not what, as you say, current thinking permits.

    Its what the “law” permits.

    The statute permits all processes.

    The “only” limitations imposed by the Court is Laws of Nature, Natural Phenomena and Abstract Ideas.

    The is very clear, concise, easy to understand and apply, both in court and in the patent prosecution process at the PTO.

    There would be no problem with resolutions if not for the aggressive efforts to change the 101 law, rather than simply comply.

    So the question remains…

    Why is there a need to change 101?

  24. IBD: I know it’s a lot to ask, Malcolm, but since you’re apparently unwilling to rigorously discuss your own suggestion

    ROTFLMAO.

    You’re kidding, right?

    What IS a “mental step”?

    A mental step is a step performed in the human mind.

    Is a “mental step” the same thing as a “thought”?

    Yes.

    Anything else? You thought these were difficult questions?

  25. You will notice that none of the typical anti-patent folk that live under the blog bridges here have ever supplied their acknowledgement of the Ultramercial case.

    I acknowledge the Ultramercial case.

    [shrugs]

  26. “Take the so-called “preemption doctrine”. The OTHER preemption doctrine is well-known among attorneys and judges, and is well-established in constitutional law. Every law student learns about it, and it is on every bar exam in the nation. It is a familiar construct to all.”

    Yeah I know right? The first few times I called it that people were all up in arms (omfg omfg we already have a preemption doctrine!) but now I see others using it all the time. Still, I see few citations and acknowledgements flowing my way.

  27. Bob–

    Even though I have proposed a particular way of dealing with 101, I have not done so with the aim of achieving any particular result in any particular case, or group of cases.

    It is just as important to bring rationality to 101 for the purpose of demonstrating satisfaction of 101, as it is for the purpose of demonstrating failure to satisfy 101.

    I will read your post more closely, later.

  28. Bob:

    “I agree with David Lewis that preemption doctrine has no intellectually rigorous dividing line at which to decide patent eligible form not patent eligible inventions.”

    In considering the so-called “preemption doctrine”, I have shown that it CAN have a rigorous dividing line, at the point where there is a total absence of specificity of utility–please see below.

    The term “preemption” is a mere rhetorical device used to describe the outcome of the specificity requirement of the utility criterion, and cannot form the basis for any rigorous test of the eligibility of S-M for patent protection, as both you and David have recognized.

  29. Bob, you ask: “Why is not a field of use limitation a valid application of a law of nature?”

    I had prepared a general answer to this question, but I think it will be more illustrative if you provide me with what you believe to be an example of such a claim, and let me analyze it.

    For an example of an analysis of a specific claim intended by Robin to have been drafted in this format, please see my analysis of “all uses of e=mc*2 in the construction field” in one of my posts below.

  30. 500 trillion desk chairs is not one desk chair. Although, good try.

    I’m also concerned about the supposed inherent collapse into a spherical plasma. I don’t think that will happen. Gases form plasmas MUCH more easily than solids do. That said, I’m not sure if the universe has ever seen a solid mass of the size of 500 trillion desk chairs. Then again, I don’t know what that mass is because I haven’t multiplied out the avg mass of a desk chair.

    Also, how you going to convert all that energy into a capturable usable form?

    Finally I didn’t know that wood comprised a lot of hydrogen free of bonds to other atoms. Or will those bonds magically break down in your hypo like the plasma will spontaneously ignite?

  31. Bob, I note that you are ducking the straightforward question that was asked of you.

    If the mental step is added to an otherwise old or obvious process, there may be a problem under 102/103, but 101 and patent eligibility should not be an issue.

    Bob, do you agree that if a claim is granted on [oldstep]+[newthought] that such a claim is effectively a claim to the new thought, at least as far as practitioners of the prior art are concerned?

    . Bringing 101 to bear on claims such as these has helped create the mess we are in.

    In fact, Bob, it’s the failure to bring 101 to bear on claims in the form [oldstep]+[newthought] that has led to the mess we’re in.

    Do you believe that one can simply add a step of “thinking [new thought]” to an otherwise old (and therefore unpatentable) eligible step and obtain a valid patent? If so, how is such a claim not effectively a claim to a method of thinking a new thought when it is asserted against one who is practicing the old step? And how does that not raise a 101 issue, Bob?

  32. First of all, claims of the form you describe are but a subset of claims that have issues, and any solution you suggest is limited to claims of that form, and hence not preferable to a more comprehensive solution.

    Second, until you provide a working definition of “thought”, there is no possibility of meaningfully assessing the worth of your suggestion.

    Third, your “one size fits all” disparagement is entirely nonsensical. Every provision of 35 USC, including the utility requirement of 101, applies to all inventions sought to be patented. Any analysis of compliance with the utility requirement must necessarily be able to be applied to any invention disclosure that is purported to support patent protection therefor.

    Think of it this way: no suggested paradigm should rely on “new law”, and to the extent that it might, such “new law” should have a firm foundation in existing law.

    I have systematically described the underpinnings of my suggestion as arising from current law. Sources of law supporting suggested analyses and interpretations are specifically identified, which has permitted me to separate the wheat from the chaff of unhelpful rhetorical devices. Mine is simply an exercise in the organization and elucidation of currently-disorganized concepts. Where a change proves very desirable in helping to maintain overall consistency and coherence, the change required is one of judge-made law rather than of statutory law, and is one of the character of a concept (substantiality) that has heretofore not been rigorously considered.

    Your suggestion, on the other hand, defies even the simplest attempt at construction, and its possible merit is therefore unable to be analyzed meaningfully. What IS a “mental step”? Is a “mental step” the same thing as a “thought”? Nobody knows, and your suggestion is therefore DOA.

    Your unwillingness to provide this basic information in support of your own argument is, frankly, puzzling. I think you really believe in what you’re saying, and that you genuinely want others to believe it, too–yet you are unwilling to do what is required to achieve this objective.

    Since you post often, and sometimes at length, you obviously have the time to dedicate to it, perhaps at the expense of other posting.

    Maybe you recognize the weaknesses or flaws inherent in your suggestion and don’t want them to be discussed, or maybe you don’t recognize them at all. Or maybe you’re just a troll.

    I know it’s a lot to ask, Malcolm, but since you’re apparently unwilling to rigorously discuss your own suggestion, could you please at least identify with specificity the “legal woo” you suspect would arise in my suggested paradigm, in light of my prior posts.

  33. Jimmy: your answer was refuted quite substantively on Dec 14, 2011 at 02:30 PM

    LOL, Jimmy. There’s a big difference between a weeping infant crying “YOU’RE WRONG BECAUSE I SAY SO” and refutation.

    In any event, I’m sure AI appreciates the BJ. Keep the laughs comin, Jimmy!

  34. Ned and others,

    I’d like to reiterate what I said earlier about “abstractness”:

    “Abstractness”, like “pre-emption”, should be viewed as a descriptive term only, that describes the outcome of an analysis based on the language of Title 8 and 35 USC, and NOT as any kind of a starting-point for analysis. They are not the basis of “doctrines”, they are labels of convenience.

    In any case such as e=mc*2 or f=ma, my preference is to construe “abstractness” as the failure of the disclosed S-M to occupy one of the statutorily-enumerated categories.”

    As “abstractness” is no more than a convenient label for the outcome of an analysis based on the language of Title 8 and 35 USC, and is NOT the legitimate basis of any “doctrine”, the term can be applied to describe the outcome of more than one analysis, if desired.

    Thus, in addition to describing the failure of the disclosed S-M to occupy one of the statutorily-enumerated categories, the term “abstract” can describe the failure of the disclosed S-M to exhibit substantiality of utility.

    The two analyses are entirely different and independent, but the same unhelpful label can confusingly be applied to the outcome of both.

    So,

    “Pre-emptive” = totally non-specific utility

    “Abstract” = neither a process, machine,manufacture,
    composition of matter, nor any new and
    useful improvement thereof, and/or insubstantial utility

    This is why both the terms “abstract” and “preempt” should be eliminated from the patent lexicon.

    They are no more than confusing rhetorical devices.

  35. There are at least 2 reasons:

    1) current 101 thinking does not permit efficient resolution of 101 issues by courts and other tribunals, and

    2) current 101 thinking does not confer an adequate degree of predictability upon the outcome of any 101 analysis, ultimately leading to uncertainty and lower efficiency.

  36. “I do have a very straightforward and irrefutably correct answer to put in its place, at least with respect to addressing claims in the form [oldstep]+[newthought].”

    Perhaps you missed it MM but your answer was refuted quite substantively on Dec 14, 2011 at 02:30 PM.

    And I do believe there has been no response or rebuttal from you.

  37. I do have a very straightforward and irrefutably correct answer to put in its place, at least with respect to addressing claims in the form [oldstep]+[newthought].

    Your irrefutably correct answer has been ruled illegal (N O D I S S E C T I O N F O R 1 0 1).

    Can’t be all that and a bag of nuts if you cannot even geet past the “legal” part.

  38. A bad pun on the “House” derivative joke – that’s even worse than the Reign of Diehr

  39. Dr Knuth is widely regarded as the “father of the analysis of algorithms”.

    How many patents is he listed on as an inventor? Must be a huge number.

  40. I know a Family. the father 100% Cherokee, also a Diabetic. The mother also a Diabetic, and Irish but not sure what else. They had four children. So chances are the children would carry the Gene. Three girls and one boy. All three girls died of complications to the Disease. The Boy never got Diabetes. So somewhere in that marker he was saved. Now if the doctor could find that marker would it be more than an Art form? But I ( being a nobody) still think what the marker carrying the Gene signified he made a discovery. And the one who finds why the Boy never got it will have made a better one. Yes the marker may skip a generation. But to skip the Boy, and then find that his Son that he has may have also missed the Marker. And if he did, and does not have the Marker, can you imagine what that might mean. Me of course being a nobody may also be thinking it would be a Miracle, may just be two negatives canceling the Marker.
    This is a true Story. But the boy I am not sure if he being a nobody carries the Gene. And then that would be an even bigger Discovery. And maybe then that Marker could be tested in Cancers and the Research of negatives canceling out the Gene. Again I am just a nobody but WOW wouldn’t that be fantastic if that were possible.

  41. revoke All IBP is doing is exchanging one paradigm for another. Granted, his paradigm sounds better, but it still misses the boat. Note that I don’t lambast IBP’s paradigm because frankly, I don’t have an answer to put in its place.

    I agree with you. However, I do have a very straightforward and irrefutably correct answer to put in its place, at least with respect to addressing claims in the form [oldstep]+[newthought].

    I guess you could call me “conservative” but I don’t believe you can turn the utility prong of 101 into a “one size fits all” analysis without engaging in at least as much legal woo as currently exists in our case law (e.g., Bilski).

    Perhaps even one of the txxbxggxr sockpuppets may agree with me on that point.

  42. I find the thermonuclear desk chair an awesome concept. If you think of the stored energy, it would be far worse than an H-bomb.

  43. Hi Ned,

    Thanks for wading through the posts.

    Actually, what I reason is that:

    “Pre-emptive” = totally non-specific utility

    “Abstract” = neither a process, machine,manufacture,
    composition of matter, nor any new and
    useful improvement thereof

    Sorry for the confusion, this is a work in progress.

  44. Hi Revoke–

    I just posted a response to your post.

    You identified a key substitution issue that I had also identified, and that I have worked hard to avoid.

    I have not in fact exchanged specificity for abstractness–I describe how they should be completely separated conceptually, and I express my opinion that the question “what’s specific enough” is easily answerable in a binary fashion.

    Ultimately, I demonstrate rationally the proposition that you just made: that “one can have a broad utility (i.e. non-specific) and still avoid abstractness.”

  45. WARNING: This is a long post, so I will post the most important thing here first, briefly:

    I would invite posters to provide me with sample claims that they believe could require an analysis of specificity of utility. I will go through the exercise to see first if they DO actually require such an analysis, and if they do, what the outcome would be of using a binary specificity paradigm. The merit of such individual outcomes could then be discussed from a legal perspective.

    Path–

    You have made the critical observation that necessitates consideration of the other dimensions of utility, S-M eligibility, and disclosure under 112.

    I think that abstractness and specificity can be successfully distinguished, and that neither abstractness nor specificity require any quantification, that the results of both abstractness and specificity inquiries can be binary, and that bright-line legal tests are possible for both.

    Ignoring the substantiality and credibility dimensions of utility, it is possible (although not preferable) to dispose of situations like the e=mc*2 above and the f=ma of Ned’s example, using only the utility criterion of specificity, as those examples lie at one end of the specificity spectrum.

    HOWEVER, my above post was made for illustrative purposes only…any expression like e=mc*2 or f=ma does not disclose eligible S-M under 101 because it DOES NOT DISCLOSE A PROCESS, MACHINE, MANUFACTURE, COMPOSITION OF MATTER, OR ANY NEW AND USEFUL IMPROVEMENT THEREOF.

    These are statutorily-enumerated categories, that exist IN ADDITION TO the utility requirement. No utility analysis should ever be performed on a claim written in the form e=mc*2 or f=ma because any such claim falls outside the statutory categories and hence fails 101.

    When I said in an earlier post that “We do not deny eligibility because it would preempt anything—we do it because the specific utility criterion of 35 USC 101 is not satisfied by the statement E=mc*2.”, I said this only to extend the mechanism of analysis that would be used when the inquiry was expanded to the new claim form “all uses of e=mc*2 in the construction field”, as described by Robin.

    That new claim form still DOES NOT appear to disclose a process, and not being within one of the statutory categories, should not be analyzed with respect to the utility requirement. I made my earlier statement applying the specificity criterion to such a claim for purposes of illustrative consistency only. A claim in such a form should be rejected under 112p2 as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention, and 101 should never be reached at all IMHO.

    In reality, assuming that a claim in the form e=mc*2 satisfies 112, we would deny e=mc*2 eligibility because IT FAILS TO DISCLOSE A PROCESS, MACHINE, MANUFACTURE, COMPOSITION OF MATTER, OR ANY NEW AND USEFUL IMPROVEMENT THEREOF, does not describe S-M within any of the statutorily-enumerated categories, and thus fails 101.

    So, back to “specificity” as “abstractness”. In any case such as e=mc*2 or f=ma, my preference is to construe “abstractness” as the failure of the disclosed S-M to occupy one of the statutorily-enumerated categories.

    Abstractness and specificity of utility should be seen as 2 independent constructs…for instance, if one claimed something like “I claim all practical applications of Newton’s Second Law.”, what would be the best basis for rejection? The first and best way would be to reject on 112p2 for indefiniteness, for it is impossible for a PHOSITA to determine the scope of the claim based solely upon such disclosure. If the claim was judged to satisfy 112 the claim would be characterized as disclosing a process and the S-M would therefore be within a statutory category. But at this point would the claim better characterized as being “abstract”, or as “lacking specific utility”? IMHO, the latter is preferable, as it is more easily logically demonstrable.

    This system would dispense with any sliding scale of “levels or degrees of abstractness”–that is, if the S-M discloses a process, machine, manufacture, composition of matter, or any new and useful improvement thereof, it is not “abstract”.

    “Abstractness”, like “pre-emption”, should be viewed as a descriptive term only, that describes the outcome of an analysis based on the language of Title 8 and 35 USC, and NOT as any kind of a starting-point for analysis. They are not the basis of “doctrines”, they are labels of convenience.

    Now that “abstractness” and “specificity of utility” have been separated both conceptually and practically, and now that the sliding scale of “degrees of abstractness” has been eliminated, we now come to the issue of the sliding scale of “levels of specificity”.

    An expression specifically disclosing “all uses of e=mc*2 in the construction field” should be rejected on 112p2. If it was nevertheless judged to satisfy 112p2, the analysis would proceed to a 101 analysis, including a utility analysis. In practice, as claims in this form do not actually assert any utility, utility would have to be identified by an examiner as a “well-established utility”–in the specific case of “all uses of e=mc*2 in the construction field”, there would not only be no asserted utility, but no well-established utility at all, and the claim should be rejected both under 112p1 for failure to teach how to use the invention, as well as under 101. Simultaneous 112p1 and 101 utility-based rejections are well-established logically and accepted judicially.

    So, neither claims of the form “e=mc*2″ or “all uses of e=mc*2 in the construction field” are useful to discuss the issue of a sliding scale of specificity of utility, as they should never reach the specificity analysis.

    Claims that WOULD reach an analysis of utility are those claims that satisfied 112p2 in that their scope could be determined by a PHOSITA (“definite”), and that disclosed S-M within one of the statutory categories (“not abstract”). The first utility inquiry is performed to determine whether or not there is ANY utility suggested at all, be it an asserted or a well-established utility–if not, no SS&C analysis is ever performed, and the claim is rejected on both 101 and 112p1 grounds.

    If a suggested utility is found, then analyses of specificity, substantiality, and credibility are performed, in order of convenience as permitted by the particular claim under examination. In the case of something clearly at the far end of the specificity spectrum (totally non-specific), the specificity analysis may profitably be the first and possibly the only one of the SS&C analyses performed.

    In the case where the specificity was not at the totally unspecific end of the specificity spectrum, the substantiality and credibility requirements could be considered first, as dictated by convenience. The only situation where the issue of a sliding scale of specificity would necessarily manifest would be in that situation where 112p2 scope, 101 statutory categories, 101 any utility, 112p1 teaching use, 101 substantial utility, and 101 credible utility were all satisfied. In situations where they were not already satisfied, raising the issue of a sliding specificity scale would be discretionary.

    Having said all that, let’s now look at whether or not there actually is a sliding scale of specificity. Remember, in the above scenario, it has already been found, among other things, that the utility was not totally non-specific. Would it be helpful to characterize specificity as binary, and stop there? That is, any utility that is not totally non-specific satisfies the specificity requirement? Possibly. To leave it at this point would preserve the concepts inherent in the so-called “preemption doctrine”, and would achieve great clarity legally, as there would be a bright-line legal test: is the utility limited in any way?

    Considering that all the other criteria would have already been satisfied, this may be an appropriate end-point. Remember that the requirements of 112p1, 112p2, and all the other 101 requirements have already been met by such a claim.

    Furthermore, such an end-point would not conflict with that small wrinkle in the specificity requirement, that it is the STATEMENT of utility, express or implied, in addition to the actual utility itself, that must be “specific” (see MPEP 2107.01(I)(A) for a general presentation of this concept) (i.e. the difference between stating that the invention might be useful and stating that it is useful). This small wrinkle is actually merely an analytical device aimed at more efficiently conducting an analysis of the specificity of the utility itself–that is, it is assumed (rightly I believe) that a non-specific statement of utility can only be made if the utility itself is non-specific. That this is true prevents the exaltation of the form of the statement over the substance of the disclosure.

    The claim in Prometheus is of no assistance in the inquiry of whether or not the outcome of the specificity analysis should be binary, as that claim should be rejected on some of the above grounds as I have expressed in other posts.

    I would invite posters to provide me with sample claims that they believe could require an analysis of specificity of utility. I will go through the exercise to see first if they DO actually require such an analysis, and if they do, what the outcome would be of using a binary specificity paradigm. The merit of such individual outcomes could then be discussed from a legal perspective.

    Of course, such a process would likely entail a substantiality analysis, of which I have a very particular flavor…I would conduct that analysis, but would not let the results of it alone preclude a specificity analysis, in order to fairly test the specificity analysis.

    My feeling is that the two must go hand-in-hand in order for consistency to best be achieved.

  46. Ah. Too many words.

    Abstract == No specific utility.

    That shorter?

    But, you say a claim can have “broad” utility and still not be abstract.

    So, really, the question is the word, “specific.” What does it encompass?

    This is where 6 pops in and provides the answer. I bet I know what it is.

  47. “I am told that the courts are trying to make a distinction between mathematical algorithms and nonmathematical algorithms.”

    Perhaps 30 years ago. The reaction to Benson then focused heavily on just what was a mathematical algorithm because the forces aligned against Benson wanted to limit its scope to just mathematical algorithms.

    But that effort has evolved — because we now understand the problem of Benson was not mathematics per se, but the lack of tethering of a series of essentially mental steps to a specific use.

  48. Ned,

    Have you read A Different Path to the Same Dead End’s response to the “lucid” IBP post?

    The post is not as lucid as you might infer – IBP makes the classic mucking of breadth versus abstractness. One can have a broad utility (i.e. non-specific) and still avoid abstractness.

    All IBP is doing is exchanging one paradigm for another. Granted, his paradigm sounds better, but it still misses the boat. Note that I don’t lambast IBP’s paradigm because frankly, I don’t have an answer to put in its place. I just don’t think you gain anything with the “specific” semanatics (who is to say “what’s specific enough”?).

  49. Ned, I agree. Mental processes are potentially more of a problem with software, web, and computer inventions. I do not see (and the Supreme court decisions generally are consistent) that a process that recites physical acts with physical objects, but that also includes a mental step, is in any way “merely” a mental process. The physical steps make it a “real” (not abstract, not mental) process. If the mental step is added to an otherwise old or obvious process, there may be a problem under 102/103, but 101 and patent eligibility should not be an issue. Bringing 101 to bear on claims such as these has helped create the mess we are in.

  50. You will notice that none of the typical anti-patent folk that live under the blog bridges here have ever supplied their acknowledgement of the Ultramercial case.

    They think if they keep their eyes closed, the case will just go away.

  51. You’ve exchanged the label of “abstractness” for the label of “specificity.”

    That is all.

    Now, instead of trying to qualify/quantify “abstract” we are left to do the same with “specific”

  52. Correction:; computer programs are applied math.

    You don’t write a program to do nothing. Programs are written to do something.

    They inherently have utility, or they simply are not computer programs.

    RMJ – don’t teach.

  53. “Now I am not aware of something so dramatic (2 equally valid and elegant alternative theories) that describe general relativity, but if it could happen to quantum, why not relativity?”

    You would know why if you knew anything about them. “relativity” aka “general relativity” is a theory of gravity. And there is another theory of gravity out there, several in fact, one you might have heard of is Newton’s theory of gravity. Entropic theory of gravity is another one which has been around for awhile in various forms but just recently got a big boost from a guy that “rediscovered” or “rederived it” on his own and added some previously unmentioned insights.

    link to en.wikipedia.org

    “E=mc2 may not be so much a “discovered” “law” of universe, but an “invented” “model” of the universe”

    Or maybe it is neither and is simply a simplified form of a more complex formula. Try deriving it sometime so you understand a little better.

    Remedial physics classes guys. Look into them. Please. For the love of go d, stop publishing papers and talking about physics until you’ve had some.

    “Consider: when a doctor evaluates many biomarkers and based on his experience and expertise – the ART that is medicine – come up with a process for assessing patterns of markers to diagnose for certain diseases with certain probability of success. We say, sure that is patentable.”

    Well then, perhaps whomever is saying that needs to stop.

    “We are patenting expertise, not law of nature. ”

    See judicial exception “abstract idea”.

  54. “I am told that the courts are trying to make a distinction between mathematical algorithms and nonmathematical algorithms. To a computer scientist, this makes no sense, because every algorithm is as mathematical as anything could be. An algorithm is an abstract concept unrelated to physical laws of the universe.” [1]

    The above quote is from Donald Knuth, a computer scientist and Professor Emeritus at Stanford University holding a Ph.D. in mathematics. His multi-volume treatise, “The Art of Computer Programming” remains the most comprehensive treatment of the subject (it is the “Nimmer On Copyright” of the computer science field). Dr Knuth is widely regarded as the “father of the analysis of algorithms”.

    Perhaps Robin Feldman should visit some universities that offer courses in computer science or mathematics and ask those familiar with the field what “the term ‘algorithm’ in computer science means.”

    [1] link to progfree.org

  55. Take 500 trillion desk chairs and put them in close proximity in the middle of space. They will collapse into a spherical plasma due to their gravitational force. The hydrogen from the plastic/wood will begin fusing, resulting in the release of electromagnetic and thermal energy proportional to the mass consumed in the fusion. Viola, energy from chair!

  56. I have a problem generally with the assertion that the use of some simple relationship is not patentable because it is so simple as to be a reflection of nature, but some complex model is patentable because it reflective more an inventive “model,” not a “law” of nature.

    The problem is – as the author here has noted in footnote iii – is that many basic knowledge – including math – can be deemed inventive models of reality rather than laws of nature.

    Consider: when students study quantum mechanics, they often study Schrodinger’s equation and other wave/probability – based formulations created in the early 20th century. However, in the mid 20th century, Feymann created an alternative theory of quantum mechanics. This is not an alternative interpretation of wave equations, but a total different theory based on path integrals.

    Now I am not aware of something so dramatic (2 equally valid and elegant alternative theories) that describe general relativity, but if it could happen to quantum, why not relativity? E=mc2 may not be so much a “discovered” “law” of universe, but an “invented” “model” of the universe.

    If we cannot distinguish “interpretive” “models” from “natural” “laws” in physics, I am not sure if we can do so in the biological realm. What is “law” at one time may turn out to be a mere “interpretation” at another – and what is “interpretive” at one time may also – with more discoveries – may turn out to be a mere consequence of a natural law.

    Consider: when a doctor evaluates many biomarkers and based on his experience and expertise – the ART that is medicine – come up with a process for assessing patterns of markers to diagnose for certain diseases with certain probability of success. We say, sure that is patentable. We are patenting expertise, not law of nature.

    But suppose with more research, the mechanics of the diseases are clarified. It becomes less mysterious why the test works. In fact, it may turn out to be that the selection of the biomarkers – based on the new knowledge – would have been obvious. It’s a mere reflection of knowledge about nature.

    It’d be strange to decide on the eligibility of the subject matter based on other state of the knowledge – determining some knowledge may to be eligible or ineligible depending on the state of other art…

    Anyways, I had explored some of these topics in a paper I recently published (link to lawweb.usc.edu) – although there are definitely more to explore.

    What Prof. Feldman writes does resonate with me. I have wondered if a copyright-based rule for personalized medicine works that distinguishes between an idea vs. an interpretation of an idea is an answer. On the other hand, I think what we need is more policy-informed law in this area, not doctrinal-driven laws or even semantic arguments about what is nature vs. what is not.

  57. “Thus, the fact that computer programs are expressed in a formulaic language that looks somewhat like math to the layperson does not mean that the concepts underlying a particular program are analogous to math…”

    Oh dear! Another confused person who does not understand computers. Lets try this one more time, class. EVERY computer program is EXACTLY EQUIVALENT to:

    X_k+1 = f(X_k)

    Where X_k are integers and F is a function that maps an integer argument to an integer result.

    COMPUTER PROGRAMS ARE MATH.

  58. Unfortunate statements like the following:

    “It is true, as a general matter, that if one were to claim a law of nature, the claim would not be rendered patentable by limiting use of that law of nature to a particular field.”

    illustrate well the confusion that currently pervades discussions of S-M eligibility.

    The statement is a non-sequitur. A claim to a “law of nature” is NOT the equivalent of a claim to the USE of a “law of nature”, as suggested by the statement–it is the equivalent of a claim to ALL USES of a “law of nature”, and the sentence therefore makes no logical sense.

    In the example limited claim that Robin gives:

    “all uses of E = MC2 in the construction field.”,

    the utility is clearly non-specific and therefore fails to satisfy 101–however, “limiting use of that law of nature (e=mc*2) to a particular field” is as far as I can tell the very essence of the specific utility requirement of 101. Of course not every such limitation will satisfy the requirement of specificity, but some will, if drafted accordingly.

    I think that a justifiable generalized statement, if one ever wanted to make such a statement, would be the following:

    It is true, as a general matter, that a claim that is limited to a specific application of a so-called “law of nature” can potentially satisfy the specificity condition of the utility requirement of 35 USC 101.

    , which should not be extended to conclude that ALL of the requirements of 101 are satisfied, and that the disclosed S-M is eligible.

    There is much in the published excerpt that appears to me to be woefully imprecise, if not inaccurate or inarticulate.

  59. The problem with trying to convince the patent office to examine “hundreds of biomarker levels” – if that is what is needed for a definitive diagnosis or prognosis, is that the patent office will force hundreds of divisional applications on the applicant. You would be lucky to get them to examine a panel of more than a half dozen markers at a time.

  60. Is there a logical flaw in the proposition that a claim in the form [old step]+[new thought] is, effectively, a claim to the new thought? If so, what is the flaw? If there is no flaw, can you articulate a policy reason for granting such claims while maintaining an absolute bar against patenting claims that recite only mental processes?

    Hey, Professor Feldman, how about an answer to these straightforward questions? Take a stab at ‘em. Don’t be afraid of the sockpuppets trolling here. They’re harmless.

  61. Ugh, I meant, “women with elevated hCG levels are pregnant.”

    She said,

    “The inventor should not, however, be allowed to patent the process of testing human urine for an elevated level of hCG and correlating that level with the state of pregnancy.”

  62. Good point here. The use of mental steps in claims is quite allowable provided they modify physical steps. For example, the method of boiling an egg comprising placing an egg in boiling water, counting to 300, and then removing the egg seems patentable in the same way as the claims in Diamond v. Diehr.

  63. IANAE, we agree. Note that I started with “math per se.” Surely these are only mental steps.

    Confining the math to the computer eliminates Benson identified problem (2). But, it does not eliminate Benson identified problem (1) if one considers that using a computer to perform the calculation is not a practical use, which is what Benson ended up saying.

    The short-hand term for not limiting the claim to a specific use is “abstract.” We seem to agree on that as well.

    Now turn to Bilski. I would argue that the claims there were limited to a specific use(the hedging method actually claimed), however the claims were not limited to the use of a machine to perform the “math.” Thus the claims in Bilski suffer from the mental steps problem, but did not suffer from the “abstractness” problem.

  64. Which will no doubt be followed by an increase in cries from MM and Ned for Dennis to ban such opposing views and comments

    …or no doubt to their continued obfuscation and game playing.

  65. The above statement fails to be a fact, with one clear and truthful observation. No patent claim has ever prevented anyone from thinking a mere thought.

    And thus, everytime that Malcolm advances this p1sspoor argument, he is pwned by Actual Inventor.

  66. Anything that could be performed as a mental step is abstract,…

    …whether or not such is economically practical, and whether or not it is in fact being performed by a machine

    BZZZZT – wrong. Conflation reigns. You are mixing up the tool and use of the tool.

    Check with Malcolm as he continues to search for the answer to the question as to why mental steps included in claims have not been barred. You are going down the same path and instantly barring anything you see with a mental step as “abstract.”

    Sorry – the law just is not that way.

  67. “It’s a soundbyte war and this blog used to be MM’s dominion and bully pulpit (the 60% vocal posts). But with a few people throwing cold water on the Wicked Witch of the West (the 30% reply posts), Malcolm and company are all up in arms that their soundbyte machine continues to be derailed.”…And with that same token, the beat-downs will also continue (because there are enough of theose e_vil sockie trolls out there that are willing to poke gaping holes in the (non)logic of the conflaters and anti-patent folks.”

    Which will no doubt be followed by an increase in cries from MM and Ned for Dennis to ban such opposing views and comments.

  68. he computer is merely a proxy for the performing of a mental process and nothing more.

    Software, like other written instructions, should be protected by copyright laws

    More lack of knowldege of what patent law does and the diffferences in protection afforded by patent law and by other IP laws.

    What a hack.

  69. IBP, good post. When I made this point to 6 awhile back, he agreed that what preemption really meant was lack of a specific use.

    When Benson said that use of the algorithm on the computer wholly preempted the algorithm, what they meant was that using a computer to calculate the algorithm was not the specific they had in mind.

  70. MM: do you agree with the government’s statement: “[Y]ou can’t get a patent by tacking a mental step onto an utterly conventional process for administering drugs and testing their effects.” ?

    AI: No. I disagree for the same reason the Supreme Court disagreed with the Government in (DIEHR):

    “To accept the analysis proffered by the Government would, if carried to its extreme, make all inventions unpatentable because all inventions can be reduced to underlying principles of nature which, once known, make their implementation obvious. The analysis suggested by the Government would also undermine our earlier decisions regarding the criteria to consider in determining the eligibility of a process for patent protection. See, e.g., Gottschalk v. Benson, 409 U.S. 63, 175 USPQ 673 (1973); and Cochrane v. Deener, 94 U.S. 780 (1876).”

    MM: We don’t necessarily “need” to bring “mere data gathering steps” and “inconsequential post-solution actitivy” into the analysis.

    AI: Then don’t do it.

    MM:But they are one way of dealing with applicants who attempt to protect mental processes and/or abstract ideas (“thoughts” or “observations”) by merely tacking an eligible but old (non-novel, obvious) process step.

    AI: The glaring fallacy in your reasoning is that mere thoughts or observations can be protected by a patent claim. Such is impossible. If an Actual Inventor claimed a mere thought it would be subjective and thus unable to be repeated exactly and therefore practiced by a the Phosita . This would render the claim indefinite, and thus it would fail 112.

    In addition because the mere thought or observation could be thought or observed in an infinite number of ways it would fail to be an enforceable patent under 102 novelty. Since a would be infringer could literally think or observe in an infinite number of unique ways all of which would be impossible to objectively prove in Court. Thus there is no legal, logical or factual basis for your proposition.

    MM: As I’ve noted previously, it’s an irrebuttable fact that such claims are effectively claims to the mental processes and thoughts themsleves, at least with respect to practitioners of the prior art.

    AI: The above statement fails to be a fact, with one clear and truthful observation. No patent claim has ever prevented anyone from thinking a mere thought.

    This is no doubt true by the fact that I have read the Prometheus claims and performed them entirely in my mind and was not prevented from doing so, nor sued.

    Likewise a potential 30,000 patent professionals on this blog have read the Prometheus claims and performed them entirely in their minds and were not prevented from doing so, nor sued.

    Which means without any legal, logical, or scientific reason your proposition for dissecting, skipping, or ignoring mental or non novel steps in a claim amounts to nothing more than a thinly veiled attempt to make all inventions unpatentable.

  71. Because the “real” reason math per se is unpatentable is because of the mental steps doctrine.

    Funny how you gloss over the “abstract intellectual concepts” bit of Benson, of which math is clearly one, and of which converting BCD to binary is an example. Benson was abstract, Flook was abstract, Bilski was abstract.

    When a computer is positively recited, and required for infringement, it’s clear that a mental step is not being claimed. Anything that could be performed as a mental step is abstract, whether or not such is economically practical, and whether or not it is in fact being performed by a machine that rearranges electrons on transistor gates. That’s the real problem here.

    Where abstraction ends and invention begins is where the abstract step has a real effect on a real world application. That’s what happened in Diehr, and it’s what didn’t happen in Prometheus.

  72. Robin Feldman should be commended for giving it the old college try—however, her analysis seems to exist at the undergraduate level.

    She needs to drill down deeper into communication to meaningfully understand and apply concepts like data, information, sign, signifier, signified, content, etc., and use semiotics, hermeneutics, and other constructs in her analysis. Deeper analysis and more comprehensive, methodical elucidation have been performed in blog posts on patently-o than appear in the above excerpt.

    But Robin is on the right track, at least. She seems to recognize through the mists the locations of solutions, but she doesn’t seem to know how to reach them. This is an all-too-common affliction among “patent professionals” and judges.
    Take the so-called “preemption doctrine”. The OTHER preemption doctrine is well-known among attorneys and judges, and is well-established in constitutional law. Every law student learns about it, and it is on every bar exam in the nation. It is a familiar construct to all.

    Somebody somewhere along the line took a look at patent eligibility, decided something, and framed it in the language of “preemption” likely through analogical reasoning—but such a construct, such a term, is only a characterization of an outcome of the application of the basic patent laws from Section 8 and Title 35, and tells us nothing about the application of those basic laws from first principles.
    This statement from Benson as illustrative: “It is conceded that one may not patent an idea. But in practical effect that would be the result if the formula for converting BCD numerals to pure binary numerals were patented in this case. The mathematical formula involved here has no substantial practical application except in connection with a digital computer, which means that if the judgment below is affirmed, the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself. “

    The actual basis for the so-called “preemption doctrine” in patent law is the utility requirement, particularly the requirement that the utility be specific.

    Think about pre-emption: what is it? It is preemption of any and all use or performance of something. How is this achieved? It is achieved by claiming any and all possible uses or applications of something, which is the very definition of a non-specific utility.

    If we forget about unhelpful analogies like the “preemption doctrine” and reason instead from more basic principles articulated in 35 USC as interpreted by our highest court, it is evident that consideration of 35 USC 101 requires consideration of the concept of utility, and that the relevant utility must be specific, substantial, and credible. Once this process is undertaken and utility is found to be non-specific, the claim is ruled to fail 101—no if’s, and’s, or but’s, no necessity to attach any other particular name to either the outcome or the process, no possible conflation with 102 or 103.

    At best, any talk of “preemption” in patent opinions should be considered mere dicta, merely illustrative of a logical association noticed by a judge to the larger “preemption doctrine”, and should not be used as the basis of any sort of rule or test to be applied in the future. The naming of a particular specific utility analysis as the “preemption doctrine” is an incidental end-point, not a substantive starting point for meaningful analysis.

    Robin shows that she has fallen into this familiar trap when she says that “We disallow patenting of E = MC2 not because it is expressed in mathematical form but because it represents one of the building blocks of scientific exploration and endeavor. Patenting that law would preempt scientific exploration by occupying a basic concept.” We do not deny eligibility because it would preempt anything—we do it because the specific utility criterion of 35 USC 101 is not satisfied by the statement E=mc*2. We do not disallow patenting because “it represents one of the building blocks of scientific exploration and endeavor.” Nowhere are these concepts articulated directly in either Section 8 or Title 35; nowhere does Congress discuss scientific exploration and endeavor in any kind of way that can be directly applied to a situation presented by a real-world fact pattern. On the other hand, a utility requirement IS directly articulated in Title 35, and is one of the legally appropriate bases upon which to consider whether or not E=mc*2 is eligible for patenting.

    Pre-emption = lacking specific utility

    I can’t believe how much confusion and hand-wringing has been going on surrounding basic 101 issues. There are interesting 101 issues to be considered, for sure—but nothing I have heard enables any meaningful, lasting resolution of those issues, let alone preparing us for unforeseen issues certain to arise in the future.

    Unfortunately, the OTHER pre-emption is currently in Supreme Court news.

    I urge the court to not focus on the language of “preemption”, but to focus instead on the substance of the patent laws as written. This is actually a pretty good opportunity to bring some clarity.

  73. The Shilling, you have got to be kidding.

    All we are talking about here is the form of the claim, whether it can be truncated to claim only the old measurement process and not be extended to cover the new treatment method.

    What Malcolm is arguing so forcefully against is making the practice of the prior art infringing. You simply cannot stand there and say that you favor that!

  74. Robin Feldman should be commended for giving it the old college try—however, her analysis seems to exist at the undergraduate level.
    She needs to drill down deeper into communication to meaningfully understand and apply concepts like data, information, sign, signifier, signified, content, etc., and use semiotics, hermeneutics, and other constructs in her analysis. Deeper analysis and more comprehensive, methodical elucidation have been performed in blog posts on patently-o than appear in the above excerpt.
    But Robin is on the right track, at least. She seems to recognize through the mists the locations of solutions, but she doesn’t seem to know how to reach them. This is an all-too-common affliction among “patent professionals” and judges.
    Take the so-called “preemption doctrine”. The OTHER preemption doctrine is well-known among attorneys and judges, and is well-established in constitutional law. Every law student learns about it, and it is on every bar exam in the nation. It is a familiar construct to all.
    Somebody somewhere along the line took a look at patent eligibility, decided something, and framed it in the language of “preemption” likely through analogical reasoning—but such a construct, such a term, is only a characterization of an outcome of the application of the basic patent laws from Section 8 and Title 35, and tells us nothing about the application of those basic laws from first principles.
    This statement from Benson as illustrative: “It is conceded that one may not patent an idea. But in practical effect that would be the result if the formula for converting BCD numerals to pure binary numerals were patented in this case. The mathematical formula involved here has no substantial practical application except in connection with a digital computer, which means that if the judgment below is affirmed, the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself. “
    The actual basis for the so-called “preemption doctrine” in patent law is the utility requirement, particularly the requirement that the utility be specific.
    Think about pre-emption: what is it? It is preemption of any and all use or performance of something. How is this achieved? It is achieved by claiming any and all possible uses or applications of something, which is the very definition of a non-specific utility.
    If we forget about unhelpful analogies like the “preemption doctrine” and reason instead from more basic principles articulated in 35 USC as interpreted by our highest court, it is evident that consideration of 35 USC 101 requires consideration of the concept of utility, and that the relevant utility must be specific, substantial, and credible. Once this process is undertaken and utility is found to be non-specific, the claim is ruled to fail 101—no if’s, and’s, or but’s, no necessity to attach any other particular name to either the outcome or the process, no possible conflation with 102 or 103.
    At best, any talk of “preemption” in patent opinions should be considered mere dicta, merely illustrative of a logical association noticed by a judge to the larger “preemption doctrine”, and should not be used as the basis of any sort of rule or test to be applied in the future. The naming of a particular specific utility analysis as the “preemption doctrine” is an incidental end-point, not a substantive starting point for meaningful analysis.
    Robin shows that she has fallen into this familiar trap when she says that “We disallow patenting of E = MC2 not because it is expressed in mathematical form but because it represents one of the building blocks of scientific exploration and endeavor. Patenting that law would preempt scientific exploration by occupying a basic concept.” We do not deny eligibility because it would preempt anything—we do it because the specific utility criterion of 35 USC 101 is not satisfied by the statement E=mc*2. We do not disallow patenting because “it represents one of the building blocks of scientific exploration and endeavor.” Nowhere are these concepts articulated directly in either Section 8 or Title 35; nowhere does Congress discuss scientific exploration and endeavor in any kind of way that can be directly applied to a situation presented by a real-world fact pattern. On the other hand, a utility requirement IS directly articulated in Title 35, and is one of the legally appropriate bases upon which to consider whether or not E=mc*2 is eligible for patenting.
    Pre-emption = lacking specific utility
    I can’t believe how much confusion and hand-wringing has been going on surrounding basic 101 issues. There are interesting 101 issues to be considered, for sure—but nothing I have heard enables any meaningful, lasting resolution of those issues, let alone preparing us for unforeseen issues certain to arise in the future.
    Unfortunately, the OTHER pre-emption is currently in Supreme Court news.
    I urge the court to not focus on the language of “preemption”, but to focus instead on the substance of the patent laws as written. This is actually a pretty good opportunity to bring some clarity.

  75. David, nice attack on preemption. However consider, that at least a portion of the reason math per se was declared unpatentable is because of the mental steps doctrine.

    From Benson:

    “Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.”

    “Here the “process” claim is so abstract and sweeping as to cover both known and unknown uses of the BCD to pure binary conversion. The end use may (1) vary from the operation of a train to verification of drivers’ licenses to researching the law books for precedents and (2) be performed through any existing machinery or future-devised machinery or without any apparatus.

    Note, the elimination of the problem of (2) does not necessarily eliminate problem (1), which is another way of saying “preemption.”

    Flook itself said that preemption was not the real problem, but did not explain why it wasn’t. However, the Flook claims did not operate on real world data. It simply solved a mathematical equation. It claimed the math in the abstract, not limited to a particular use.

    Going back to the original cases from the 1850s, this was the dividing line. Whether the abstract principle was applied to a practical use.

    What the Benson court was trying to say was that using a computer to run calculation was not what it had in mind as a practical use.

  76. Malcolm, I think Bob’s point is why is 101 involved. He seems to agree that the following is unpatentable under 102/103:

    “If, in this case, the method of observing a natural phenomenon requires or recites a particular value or characteristic of the measurement (versus allowing any value or characteristic) that was not previously known, but that value or characteristic was inherent to the natural phenomenon, then the method is still unpatentable because discoveries of inherent properties does not render an old or obvious process patentable.”

  77. Or are you perhaps solely/still concerned about the supposed arbrariness that supposedly could occur if the people performing the analysis aren’t up to snuff (like our federal circuit isn’t half the time)?

    That’s a big part of it. I’m not saying some sort of pre-emption of “natural laws” analysis would not be useful in some circumstances, but generally speaking I don’t follow the logic. Of course, one could argue that an analysis of claims for effective claiming of mental process is also a sort of “pre-emption” test (e.g., claims in the form [oldstep]+[newthought/newidea/newobservation] “pre-empt the thought/idea/observation”, at least with respect to practitioners of the prior art).

  78. From Benson: there are two problems with claiming math:

    1) mental steps; and

    if claimed in the abstract,

    2) no practical use.

    Complexity and time limitations (claimed in some form) will eliminate 1. But does it eliminate 2?

  79. anon:

    I’d be interested to read your thoughts if the claim instead of having a thinking step (which is necessarily performed by a human) had a sep of typing the result of A into a comptuer and the computer did the “thinking” i.e. determined if the result of A was less than the magic number?

    Good question, anon. My thoughts are that limiting Prometheus’s claims so that infringement requires a computer (generically recited) be used to perform the “thinking step” would, technically, eliminate the effective claiming of a mental process.

    But I would have no problem with the UPSTO or any court reasonably expanding any existing doctrine for the purpose of preventing such a claim from issuing or being enforced. For instance, in the case of the claim you are describing (and many similar claims), the computer is merely a proxy for the performing of a mental process and nothing more.

    Software, like other written instructions, should be protected by copyright laws. Congress spent a lot of time kissing the xsses of greedy copyright, with much attention paid to digital information. Instead, these greedy axxholes and their lawyers decided to turn our patent system into a joke.

  80. That said, I think if a claim can only be performed on a machine and is claimed that way, then preemption should not apply. Therefore the real reason math is verboten is “mental steps,” IMHO.

  81. Bob: If the method of observing a natural phenomenon requires or recites a particular value or characteristic of the measurement that is caused or modified by the process (that is, as a consequence of the hand of man), then the new, non-inherent value or characteristic is not a natural phenomenon and thus renders the method novel and (potentially) nonobvious. This is not hard.

    It’s merely incomprehensible, Bob. Sorry.

    Why do we need to bring …“mere data gathering steps,” and “inconsequential post-solution activity” into the analysis?

    Bob, do you agree with the government’s statement: “[Y]ou can’t get a patent by tacking a mental step onto an utterly conventional process for administering drugs and testing their effects.” ?

    We don’t necessarily “need” to bring “mere data gathering steps” and “inconsequential post-solution actitivy” into the analysis. But they are one way of dealing with applicants who attempt to protect mental processes and/or abstract ideas (“thoughts” or “observations”) by merely tacking an eligible but old (non-novel, obvious) process step. As I’ve noted previously, it’s an irrebuttable fact that such claims are effectively claims to the mental processes and thoughts themsleves, at least with respect to practitioners of the prior art.

    That’s the answer to your question. Please answer the question I asked you.

  82. IANAE, "The only part I can't figure out is why math stops being abstract once it involves too much data for a person to mentally compute in a reasonable time frame."
     
    Because the "real" reason math per se is unpatentable is because of the mental steps doctrine.
     
    From Benson:
     
    "Phenomena of nature, though just discovered, <b>mental processes</b>, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work."


     
    "Here the "process" claim is so abstract and sweeping as to cover both known and unknown uses of the BCD to pure binary conversion. The end use may (1) vary from the operation of a train to verification of drivers' licenses to researching the law books for precedents and (2) be performed through any existing machinery or future-devised machinery or <b>without any apparatus.</b>"
     
    Note, the elimination of the problem of (2) does not necessarily eliminate problem (1), which is another way of saying "preemption."
     

  83. The policy goals underlying current patent eligibility debate and jurisprudence cannot be fit within the broad and straightforward language of section 101 or even within the Supreme Court’s reasonable restriction of abstract ideas, laws of nature, and mathematical algorithms from patent eligibility.

    You forgot to mention the reasonable resitrction against patenting mental processes, Bob.

  84. Great – A newbie busts you on your pretend “nonunderstanding” and you say he is behind a week.

    Cybersource” didn’t change in a day. Back to the tower with you!

  85. Regardless of what happens to the particular medical method in Prometheus more and more people are now aware of the danger and intent of those that wish to curtail patent rights and roll back the clock on progress. And awareness is half the battle.

    That’s exactly right, Actual Inventor, and the true source of the angst coming from MM.

    It’s a soundbyte war and this blog used to be MM’s dominion and bully pulpit (the 60% vocal posts). But with a few people throwing cold water on the Wicked Witch of the West (the 30% reply posts), Malcolm and company are all up in arms that their soundbyte machine continues to be derailed.

    But don’t worry, the Shilling shall continue becuase there is a lack of alternative forums that would put up with such naked shilling.

    And with that same token, the beat-downs will also continue (because there are enough of theose e_vil sockie trolls out there that are willing to poke gaping holes in the (non)logic of the conflaters and anti-patent folks.

  86. That’s what makes the claim abstract, and doing math on a computer doesn’t make it any less abstract just because there’s a machine involved.

    False – this was posted yesterday at 1:52 PM. You thanked me for posting it “Thank you, kind-hearted newcomer to this blog. Imagine how different my comments would have been, had I known about Cybersource beforehand.” and now make the same exact mistake.

    I do not understand your attempts to spin out of the decision of Cybersource.

  87. “Why do we need to bring section 101, patent eligibility, preemption doctrine, “mere data gathering steps,” and “inconsequential post-solution activity” into the analysis?”

    Excellent questions. Let’s hope the majority of the Court asks themselves the same questions and insist on substantive answers.

  88. at least there could be no objection that the claim involved a mental step or steps.

    The objection is not that the claim is actually being infringed by mental steps. Talk to MM for that. The court is trying (not very effectively) to hold claims invalid that could be performed mentally or on paper. That’s what makes the claim abstract, and doing math on a computer doesn’t make it any less abstract just because there’s a machine involved.

    The only part I can’t figure out is why math stops being abstract once it involves too much data for a person to mentally compute in a reasonable time frame.

  89. “Unfortunately, although the pre-emption test may never leave our precedent, it seems to me the pre-emption test is a train reck in progress, which may get worse as our ability to reduce more and more complicated systems to computer simulations, mathematical models, equations and/or algorthims that incoporate the effects of minute difference materials and/or components.”

    It’s not just a train wreck. It is a “circus train wreck!” All one has to do is follow the discussions on this blog of the anti patent crowd with their various pet agenda’s to ban business methods, limit inventions to the iron age, and stop all software patents at any cost. Whether its preemption, dissection, or categorical conflation, the end result is the same, to demote the progress of the useful arts.

    Fortunately the patent community is beginning to wake up and see thru the insa nity.

    It’s encouraging to not only see more posts like this but especially to hear Supreme Court judges like Breyer at least acknowledge we have to deal with Diehrs holding and openly struggle between the old Flookian/Benson approach and Diehrs concept and application (DCAT).

    Regardless of what happens to the particular medical method in Prometheus more and more people are now aware of the danger and intent of those that wish to curtail patent rights and roll back the clock on progress. And awareness is half the battle.

  90. Although the preemption doctrine is couched in terms of preempting a law of nature or a natural phenomenon, it is applied as if broad inventions are the real target of attack. Why is not a field of use limitation a valid application of a law of nature? If a method applies a law of nature, how does the breadth of its application implicate section 101? There are good policy arguments for not allowing a patent to Isaac Newton on “a method of predicting the motion of any body using the three laws of motion,” but it is not because this method claims a law of nature or otherwise falls outside of section 101.

    Observation of a natural phenomenon that involves the hand of man should be patent eligible because that particular observation could not have been made without the hand of man. If the method of making that observation is old or obvious, then the method should be unpatentable under 35 USC 102 or 103, but it is still patent eligible under section 101. If, in this case, the method of observing a natural phenomenon requires or recites a particular value or characteristic of the measurement (versus allowing any value or characteristic) that was not previously known, but that value or characteristic was inherent to the natural phenomenon, then the method is still unpatentable because discoveries of inherent properties does not render an old or obvious process patentable. If the method of observing a natural phenomenon requires or recites a particular value or characteristic of the measurement that is caused or modified by the process (that is, as a consequence of the hand of man), then the new, non-inherent value or characteristic is not a natural phenomenon and thus renders the method novel and (potentially) nonobvious. This is not hard. Why do we need to bring section 101, patent eligibility, preemption doctrine, “mere data gathering steps,” and “inconsequential post-solution activity” into the analysis?

  91. I agree with David Lewis that preemption doctrine has no intellectually rigorous dividing line at which to decide patent eligible form not patent eligible inventions. This dooms the use of preemption doctrine to remain a tool for courts reaching personally preferred results. Granting that personally preferred results may reflect a policy position, I agree with other posters that a discussion of the policy choices should be had before we continue (mis)applying the preemption doctrine.

    It is clear there is a vocal group that believes that patenting methods of medical diagnosis and computer programs and methods is bad policy—that is, the existence of such patents has negative/unacceptable effects on markets and the development of technology in these areas. I happen to disagree with this, but that is a different question that what is or is not patent eligible under 35 USC 101. Congress can amend section 101 if it decides for policy reasons that some types of inventions should not be protected by patents. Courts should not set such policy. The policy goals underlying current patent eligibility debate and jurisprudence cannot be fit within the broad and straightforward language of section 101 or even within the Supreme Court’s reasonable restriction of abstract ideas, laws of nature, and mathematical algorithms from patent eligibility.

  92. “Consequently, taking the pre-emption line of reasoning to its absurd conclusion means that nothing is patentable, because every method and device pre-empts some law of nature.”

    Hmmm.. that sounds familiar. Where have I heard that? Oh I know! Here…

    (DIEHR): To accept the analysis proffered by the Government would, if carried to its extreme, make all inventions unpatentable because all inventions can be reduced to underlying principles of nature which, once known, make their implementation obvious. The analysis suggested by the Government would also undermine our earlier decisions regarding the criteria to consider in determining the eligibility of a process for patent protection. See, e.g., Gottschalk v. Benson, 409 U.S. 63, 175 USPQ 673 (1973); and Cochrane v. Deener, 94 U.S. 780 (1876).

  93. including many others in the relevant fields

    That’s a knind and gentle way to refer to those voices in your head. Did they teach you that in your rubber room palace?

  94. It seems to me that any mechanical device or electrical device can in principle be essentially fully described as a series of equations (which may be used to write a computer simulation), which according to current precedent is of cource just a law of nature, and the method of making or doing anything can in principle be reduced to an algorithm, which is also considered a law of nature. In a precesion mathematical model of a mechanical device, substituting equivalent components, will change those equations to a slightly different set (albeit a change that most of us don’t care about), and certainly substituting equivalent steps in method will result in a different algorithm. Consequently, taking the pre-emption line of reasoning to its absurd conclusion means that nothing is patentable, because every method and device pre-empts some law of nature (that is assuming that all algorithms and equations are laws of nature), albeit a law that is not nearly as universal as E=mc^2. I don’t believe there truly is a clear line differentiating a machine that pre-empts E=mc^2 and any other machine which necessarily pre-empts another more complicated set of equations. Unfortunately, although the pre-emption test may never leave our precedent, it seems to me the pre-emption test is a train reck in progress, which may get worse as our ability to reduce more and more complicated systems to computer simulations, mathematical models, equations and/or algorthims that incoporate the effects of minute difference materials and/or components.

  95. That was the UT connection. And there was no Lawyer or constitutional reason that I had to to retell this Story over and over again. The only difference now is there never was a Lawyer or a constitutional reason to keep me from telling it. That is why History was made in FLA! I told you that a million years ago ( it seems).
    To bad we can’t turn back the clock. Too bad we didn’t allow real History to take place, letting the best man win. We will never know now how much bad history we have attained because of this mess.

  96. Do you seriously think that E=mc**2 does not apply to a desk chair? That seems very odd. A desk chair has a value of “m”. “c” is constant. Why shouldn’t it apply? Is the value of “m” too big?

  97. Life imitates Art. And Life imitates real economic truth. 5,000.00 to steal my evidence in 1998. 1,000.00 to try to do the same thing in 2011.Holding true with the economy.
    Both promised everything, both gave me nothing. One told me he was going to his aunt Opals Funeral. but he was really going to the gore funeral.
    The other was hired in Framingham to make me smell a Rat. And to hide the real Rat. But the M.O. was the same from the beginning.
    Each one had me sign POA’s never being told in order to make it Lawyer like is to “Notarize.” And I did this over and over and over. Why wouldn’t I believe it? It took a Lawyer to contact Family to tell them what was going on, why didn’t he tell me what was going on? There was no Lawyer in charge? It was all a screen like the Wall on my Computer that is also illegal.
    How can this be legal? How can this follow the Constitution? I think we are going to need a bigger Box?

  98. I’d be interested to read your thoughts if the claim instead of having a thinking step (which is necessarily performed by a human) had a sep of typing the result of A into a comptuer and the computer did the “thinking” i.e. determined if the result of A was less than the magic number?

  99. Why do you not like the preemption “test” MM?

    Does it not acheive its sole purpose of safegaurding the judicial exceptions from drafting tricks well enough for you or what?

    Do you think that it should have another, perhaps grander, purpose and thus be substantially expanded?

    Or perhaps do you think it has another purpose already?

    Or are you perhaps solely/still concerned about the supposed arbrariness that supposedly could occur if the people performing the analysis aren’t up to snuff (like our federal circuit isn’t half the time)?

  100. As I read the claim, inducement or contributory infringement would be easy to prove if the treating Mayo physician simply orders the test (the determining step) to be done by another party and receives the test results.

    With respect to the broadest of Prometheus’ claims (which do not include a step of administering drug prior to the “determining” step), that claim could be directly infringed by an outside laboratory technician provided that the technician knew what he was looking at (very likely) and knew about Prometheus’ magic numbers (very easy to arrange).

  101. As I have read in the Minneapolis Star Tribune, Mayo does market its own competitive test, at least internally, and may have sought patent protection for it. As I read the claim, inducement or contributory infringement would be easy to prove if the treating Mayo physician simply orders the test (the determining step) to be done by another party and receives the test results. The claims could have been written “determining or having determined” with a simple supporting statement in the specification to avoid having to invoke contributory or inducement infringement.

  102. IANAE, It did.  But if the requirements of the molding process dictate a computer implementation, at least there could be no objection that the claim involved a mental step or steps.
     
    But the author of the piece does not seem to understand that it is the application of a principle of nature to produce a new result that is the clue to patentability.

  103. “There is nothing particularly natural about observing hCG levels in women. Patenting artificial human observation of a fact may be argued to be premptive of the human use of nature, but it does not preempt nature itself.”

    Well said Erik, well said.

    An what is so wrong about patenting the human use of nature?

    Every invention that ever received a patent is a human use of nature.

    Likewise every invention that ever received a patent preempts some use/application of the invention.

    These arguments for preemption, dissection, elimination of processes and the like are all anti patent driven sentiments with no basis, in science, technology, fact or logic.

    So if we are going to adopt someones socio politico agenda and policy as law then I would like to see arguments as to how such change will benefit society.

  104. Hans I didn’t say “would” save the claim under 101, I said “could.”

    For sure. I didn’t intend the comment as a correction, merely an elaboration. I should have made that more clear.

    I don’t know about the “controls” argument, Malcolm. It’s quite a stretch.

    I don’t know enough about Mayo’s operations to say. But if the hospital’s board is instructing its employees — i.e., doctors, nurses and technicians — about what procedures to follow when treating auto-immune patients, who does what, etc. it doesn’t seem to be a stretch to argue that those employees are agents under the control of the hospital. Am I missing something?

    this single actor issue is, at the end of the day, the elephant in the room when it comes to patents for biomarker correlations. …

    Generally speaking, there is absolutely true. That’s because if your “invention” is really nothing more than new information Z about risks/benefits associated with information X, it is difficult to draft a claim which captures both actors who obtain X (typically practicing the prior art or otherwise authorized acts) and the distinct actors who rely on information Z (who are also typically practicing the prior art or otherwise authorized acts).

    This is a problem for those people who are producing the risk/correlation information, at least to the extent such people believe they are entitled to patent protection for their discoveries. Warping and diminishing our patent system to accomodate such people is an incredibly stxpxd idea, however, and 10,000 millionaires crying about it isn’t going to make it any less stxpxd. But we will have to listen to that crying for quite some time. Of course, America loves to coddle weeping millionaires. It’s one of the things our country does best, right up there with exploiting brown people wherever we can find them.

  105. I didn’t say “would” save the claim under 101, I said “could.” The current claim is dead under 101, no question about that. But this single actor issue is, at the end of the day, the elephant in the room when it comes to patents for biomarker correlations. If the claim doesn’t require you to do anything with the information, then you fail 101 (assuming the step for determining the presence/amount of the biomarker is old), but if the claim does require you to do something with the information, now you have a single actor problem.

    I don’t know about the “controls” argument, Malcolm. It’s quite a stretch.

  106. Two notable misses from that high profile list:
    Ultramercial and Research Corp. Technologies I wonder why?

    Probably because I spent less time thinking which cases to include than I did typing them out (four seconds?). If you’ve got another theory, sockie, let’s hear it. I love it when you do your Squigmond Freud impersonation.

  107. Women have elevated hCG levels when pregnant. Certainly one cannot patent having elevated hCG levels. …There is nothing particularly natural about observing hCG levels in women.

    Except that if I see a pregnant woman, I know I am seeing a person with elevated hCG levels. Is it unnatural to look at a pregnant woman?

    Are you really arguing that claims to generic “observations” (not limited by novel methods or machines for making the observations) are not illegally pre-emptive because “dogs can observe pregnant women too”?

    I mean, I don’t like the pre-emption test at all but that’s really off the reservation.

  108. Yep. Adding a subsequent administering step could save the claim under 101, but then Prometheus has a problem because there is no single actor against whom to assert infringement. The party doing the administering is not the party doing the determining of the metabolite levels.

    I’m not entirely sure that is true in the case of Mayo Clinic, who arguably controls all the actors carrying out the recited steps.

    Regardless, I wish to point that the mere addition of a subsequent administering step may not be enough to rescue the claim from 101 problems. Why is that the case? Because such a claim could still effectively claim the mental step itself, at least when viewed through the lens of practitioners of the prior art.

    Consider:

    1. A method of treating a patient, comprising:
    [old test A]
    [old step of looking at result of A]
    thinking new thought about result of A, wherein if result of A is less than magic number then
    [old administering step B].

    Practitioners of the prior art were carrying out old steps A and B, in the order stated in the claim. However, their otherwise unpatentable acts may now be illegal if it is determined (in court) that they are THINKING about the new idea dedicated to the public by patentee by virtue of its being published. In fact, they may be thinking about something else entirely and performing old step B for an entirely different reason. But if a court determines that they were THINKING about the new idea while practicing those old steps, they are now infringers.

    That’s a 101 issue, unless one believes that sueing people because they are thinking something new is allowed under our patent laws.

  109. I respectfully submit that if a given correlation is not in fact proven clinically

    too bad that that is not the law, eh MM?

  110. Nature needs no human recognition or intervention — that is why it is natural. Women have elevated hCG levels when pregnant. Certainly one cannot patent having elevated hCG levels. If patentable subject matter (nature) did not prevent it, 35 USC 102 certainly would! Seeking such a patent would be the epitome of rent-seeking behavior.

    There is nothing particularly natural about observing hCG levels in women. Patenting artificial human observation of a fact may be argued to be premptive of the human use of nature, but it does not preempt nature itself.

    Justice Breyer’s glowing-finger hypothetical poses a problem of natural observation of nature. A dog might observe the glowing finger as well. As I am sure that Justice Breyer understood, this is a different class of problem than patenting nature itself or patenting unnatural observation of nature.

    But pretending that understanding the natural versus artificial, and walking through an exercise like that is going to determine the outcome, may be naive. Policy more than semantics determine the outcomes of cases like this.

  111. are closely entwined with the 101 issues

    Quick, Robin, back to the Conflation Batcave…we have to set about muddying the waters instead of bringing clarity to the law.

  112. , as should the properly claimed machines themselves

    And we know that such proper claiming includes “configured to”

    Thanks MM. (does not pat on head – who knows where MM’s head has been)/

  113. In a sense, this also was the dividing line in Diehr: the processing had to take place in real time due to speed and complexity requirements.

    I can see that making a difference for utility purposes, but how could the use of a computer vel non possibly determine whether the math itself is abstract? Particularly when the claim does not require that the computer do the math in any particular timeframe.

    The dividing line in Diehr is that a machine carried out a transformation differently by using the math.

  114. Thank you for implicitly acknowledging

    No such implicit acknowledgement present – that is an ASSumption you are making.

    Keep your hands to yourself thank you (there’s no telling where they;ve been).

  115. I don’t know enough about either party’s patent portfolios to make a definitive statement but, in general terms, Mayo Clinic is a hospital and research institution. Prometheus is a company that develops and markets pharmaceuticals/diagnostic kits to people like Mayo. It is certainly consistent with Mayo’s interests (and their patient’s interests) to eliminate or reduce further harassment by would-be licensors of patents like the piece of shxt patent being asserted by Prometheus in the instant case.

    Although you can still find a few shills and/or confused souls who will assert otherwise (and do nothing else), it’s quite clear to the vast majority of non-comatose specatators that the 102/103 issues associated with [oldstep]+[newthought] claims are closely entwined with the 101 issues associated with such claims.

  116. JFB I do not have the underlying claim construction at hand, but did the district court somehow find the wherein clauses to constitute a further step that was not anticipated?

    To be clear, the “wherein clause” was construed to constitute a step of mentally comparing the measured metabolite levels to the “magic numbers” recited in Prometheus’ claim. It was the recitation of those specified numbers that resulted (rightly or wrongly) in the allowance of the claims.

    Unless the court (or the USPTO, on re-exam) ignores the wherein clause/mental step entirely during its analysis under 102/103 (as the government alleged was mandated during oral argument), Prometheus may argue that their “magic numbers” were not known in the prior art or obvious in view of the prior art. And if one treats mental processes like any other process, that argument is not completely meritless (I’ll leave it at that for now).

  117. I should have added in my previous post that perhaps it is Mayo that is pursuing this line of attack on these particular claims rather than trying to have them disposed of via Sections 102 or 112 to achieve some larger objective. Again can anyone shed light on the background of this litigation and the strategies of the parties?

  118. Yep. Adding a subsequent administering step could save the claim under 101, but then Prometheus has a problem because there is no single actor against whom to assert infringement. The party doing the administering is not the party doing the determining of the metabolite levels. Prometheus knows this.

  119. If I understand the article, the central argument relates to complexity. If the processing of information must be carried out by a computer or other apparatus, it is patentable subject matter. If not, the claim covers an unpatentable mental step.

    In a sense, this also was the dividing line in Diehr: the processing had to take place in real time due to speed and complexity requirements.

    I will have to think on this a bit. It seems right, but others here may find fault.

  120. The Prometheus case is a particularly poor vehicle to employ in addressing the issue “Where do Processes of Nature End and Processes of Human Invention Begin?” As others have noted, the claims at issue are infringed as soon as the determining step is completed regardless of whether the determined results fall within the ranges expressed in the wherein clause or they are employed in subsequent treatment of the patient. And the administering and determining steps are admittedly old according to the patent specification. So, the issue is muddied by claims that should have been rejected as anticipated and broader than the invention that is expressed in the specification – using the discovered range to adjust the subsequent dosage.

    Note that Prometheus has obtained other patents that do include the adjusting step, and they are not being attacked by Mayo as constituting unpatentable subject matter. So, why is Prometheus asserting these patent claims when other claims also cover the accused Mayo tests and risking disaster? I do not have the underlying claim construction at hand, but did the district court somehow find the wherein clauses to constitute a further step that was not anticipated? The Supreme Court is once more going to make a total hash of section 101 law again due to a bad set of facts that could have been disposed of if the district court had held the claims as anticipated and/or not meeting section 112 and those issues had first been taken up on appeal.

  121. sockie: It is a truism that these “high profile 101 cases” are high profile because they push the edge.

    Thank you for implicitly acknowledging that patents were not intended to protect “new” information itself or to prevent “new” information from being processed according to methods in the prior art.

    I’m sure you didn’t intend to do that, sockie. Nevertheless, it’s moments like these when it’s almost worth keeping you around. Have another Cheetoh.

    [pats sockie on head]

  122. ARGH! Last paragraph should be: “Note that when I refer to “methods” I am NOT referring to methods of using novel machines that are claimed in a manner which distinguishes them structurally from prior art machines. Such methods should remain eligible, as should the properly claimed machines themselves.

  123. Prof. Feldman:

    Computer programs may be many things, including methods of creating useful models of the world around us, methods of providing interpretations of information, and methods of sorting information. When methods of creating a particular type of model are described at a very general level, they may threaten to preempt the broad activity of exploration. However, when claimed at the level of a specific method of sorting a particular type of information for a particular pursuit, they should constitute an applied invention. Such specificity is the hallmark of what separates unpatentable abstractions from applications of those abstractions in the useful arts in a way that is worthy of patent protection.

    I understand the argument and I can empathize with this viewpoint (it sounds reasonable), but if what is being proposed is a test for patent eligibility it still seems to me a bunch of unworkable hoohaw, even if it does remove the worst of the worst offenders from the system.

    The problem is that the key term in this test is the term “specific”, which is a very vague term and doesn’t really address the problem underlying most software/computer-implemented cases which is the attempt to patent the prior art by introducing “limitations” that merely recite information content that differs (or doesn’t, when the patent is poorly examined) from that in the prior art.

    Either new methods of converting information A into information B should be eligible for patenting, or they shouldn’t be. For a number of exhaustively discussed reasons, I and many others (including many others in the relevant fields) believe that they shouldn’t be. Whether those methods are limited to “specific” types of information should not make any difference.

    Note that when I refer to “methods” I am referring to methods of using novel machines that are claimed in manner which distinguishes them structurally from prior art machines.

  124. Thank you, kind-hearted newcomer to this blog. Imagine how different my comments would have been, had I known about Cybersource beforehand.

  125. “Because Einstein had just a plebian understanding of physics next to 6. [eyeroll]”

    Did I say that you tard?

    “You are confusing ease of doing something with capability ”

    No, I’m not, and if you knew w tf you were talking about you would know why.

    “Please stop pretending that your understanding of physics is da bomb.”

    I’m not because it isn’t. I would gauge it as being only slightly above the common man’s (i.e. you). But that’s a world of difference when it comes to physics.

    A person shouldn’t even bother telling lawltards how dmb they are, they’re just going to repeat the nonsense they think they know until they deem they’ve won the “argument”.

    This is not an “argument”, this is someone who knows informing you (and many other plebs hereabouts) that you’re a tard and somewhat explaining why. And also informing you that to the extent that your legal reasoninglol is based on your tardation you should reconsider.

  126. It is a truism that these “high profile 101 cases” are high profile because they push the edge.

    Each case is resolved on its own merits as to whether it is something “that a patent is for”

  127. I have a problem with basing patentability on the complexity of the math involved.

    See CyberSource Corp. v. Retail Decisions, Inc. — F.3d —

    the method could not, as a practical matter, be
    performed entirely in a human’s mind.

    Someone is indeed missing a point (but it is not who IANAE thinks).

  128. I’d also like to remind everyone that all of these high profile 101 cases (Nuijten, LabCorp, Bilksi, Prometheus, Classen, CyberSource) are either (1) attempts to patent new information or (2) attempts to patent old methods/compositions by reciting new information (often generic information) in the claims.

    Is what patents are for?

  129. Thus, most personalized-medicine programs are tremendously complex compared even to logistic regression and other simple forms of statistical analysis.

    I have a problem with basing patentability on the complexity of the math involved. Complex math is still math, a complex abstract concept is still an abstract concept, and a complex law of nature is still a law of nature.

    It’s not like regular people can do E=mc^2 in their heads or on paper, either. There’s a factor of 1/sqrt(1-v^2) hidden in the “m”. Unless you’re Richard Feynman or an autistic savant, chances are you’re reaching for your calculator, or at least a square root table. Good luck solving Schrodinger’s equation on paper for any interesting cases.

    And what of software? Is it too complex to do in one’s head when the user requires it to be done quickly? When the calculation requires storing too many bits in memory? What if those limitations are not positively recited in the claim? And why should positively reciting those limitations save an otherwise defective claim?

    A complexity-based rule completely misses the point of section 101, no matter what you think the point is, unless you think the point is to allow your client to get a patent.

  130. most personalized-medicine programs are tremendously complex compared even to logistic regression and other simple forms of statistical analysis. They are not simply a reflection of a natural phenomenon; they are an interpretive model of nature

    Let’s be perfectly clear. Anyone can develop an “interpretive model of nature,” stick a bunch of data into the model, and get a bunch of data out relating to “correlations” between identifiable “biomarkers” (a term that encompasses a nearly infinite variety of observations about an organism) and identifiable “pathologies” (a term that encompasses a nearly infinite variety of observations about an organism).

    There are two major problems with “personalized medicine” “inventions” and patents. The first is simply terrible claim drafting and poor examination of such claims by the USPTO (e.g., Prometheus claims, the LabCorp. claims, Classen claims). Enough said on that for now.

    The second is the lack of any rigorous, consistently applied standards at the USPTO for determining when such “correlations” have credible utility sufficient to merit a patent. I respectfully submit that if a given correlation is not in fact proven clinically to improve the health of patients, then it lacks sufficient utility for a patent. Absent such information, the correlation amounts to little more than an abstraction. Properly claiming the use of the correlation doesn’t change the fact that the applicant has done nothing but crunch data (almost always obtained by others, usually with the assistance of bona fide innovators of unquestionably eligible technologies) and presented the world with a risk assessment. Such numbers should not be the subjects of patents, no matter how they are dressed up, unless the benefit to patients is proven. Granting patents on the bare information will not promote progress, but impede it.

  131. I have my doubts as to its veracity.

    Because Einstein had just a plebian understanding of physics next to 6. [eyeroll]

    your enabled method for doing so

    You are confusing ease of doing something with capability – and you realize the capability by trying (unsuccessfully) to remove the “enabled method” from the discussion from the get-go – nuclear reactions.

    The fact is that such conversion has been done by man (unless you think Nagasaki was an elaborate hoax), and happens in nature every day – your being in the dark notwithstanding.

    Please stop pretending that your understanding of physics is da bomb.

  132. Tell you what should be a req for the patent bar, taking a remedial physics class.

    Why should that be a requirement when so many applications these days have more to do with sociology and marketing than physics?

  133. “You have soemthing against nuclear reactions? Do they somehow fall outside of the actual truth of the statement, oh perhaps, because you do not want the statement to be true?”

    I don’t mind if it is true, although I have my doubts as to its veracity. Why does the author not go ahead and tell us this prose? She seems to presume that it would be a simple matter, probably due to her lack of ever having derived it from “scratch”, and that the veracity of the statement is unquestionable. I’m not even sure if we know enough to be able to write it out “in prose” without falling back on math while actually describing all that is entailed in the formula itself. Looking to the wiki and to written works on the subject it appears to not be a task which is readily accomplished if it can be at all.

    Never the less perhaps I’m mistaken and someone will post such prose in this here thread.

    “Actually, that is exactly what you “can” do – unless you think Einstein was wrong…”

    O really? I wonder why, since it is so easy to get all this energy out of an ordinary desk chair, Einstein, or anyone that came after him, would ever pay an eletric bill? Please to be submitting to me your enabled method for doing so, privately if you don’t mind, because I’d like to patent it and solve the world’s energy problems while making a million dollars.

    You people in patent lawl don’t know your arse from physics. You have a plebian understanding at worst which is the best for you. And what is even worse than you knowing nothing, or in this case probably less than nothing, is that you know nothing while thinking you know something.

    Tell you what should be a req for the patent bar, taking a remedial physics class.

  134. or a nuclear reaction are concerned

    You have soemthing against nuclear reactions? Do they somehow fall outside of the actual truth of the statement, oh perhaps, because you do not want the statement to be true?

    You cannot, for instance, “interchange” your office chair for some energy and get as much energy as e=mc^2 would predict from the chair’s mass.

    Actually, that is exactly what you “can” do – unless you think Einstein was wrong…

  135. I’m going to go ahead and give you the ol’ SOME GOOD IDEAS, SOME MUDDLED AND UNSUPPORTED IDEAS, POOR GRAMMAR: PLEASE REVISE AND CLARIFY.

    And this time don’t forget your citations to authority.

  136. “One could express that same law in prose, however, rather than formulaic language by explaining the way in which matter and energy are interchangeable.”

    Someone doesn’t have his physics hat on today. Those two things are only “interchangeable” in so far as a math equation or a nuclear reaction are concerned. You cannot, for instance, “interchange” your office chair for some energy and get as much energy as e=mc^2 would predict from the chair’s mass.

    I’d very much look forward to hearing, in “prose” a translation of this “law”.

    In short, your plebian understanding of physics does your paper violence and casts a significant shadow over whatever other nonsense you were going on about. Which was interesting until I saw that.

    “Sliding the analogy over to software, however, involves logical errors. The logic that appears to have been used is the following. Computer programs are mathematical formulas, and mathematical formulas are laws of nature. We know that laws of nature cannot be rendered patentable by limiting their application to a particular field of use. Computer programs, therefore, cannot be rendered patentable by limiting their application to a particular field of use.”

    Ok nm, you were lost to begin with. Nobody made that argument outside of whatever legal dept. you’re working in.

    “One must look to the content of the computer program and its potentially preemptive effect to determine patentability.”

    At least you’ve deemed fit to include my ideas. I notice however that I went uncited.

    Nobody apparently is a worse intellectual property thief than an IP lawlyer. I wonder if you just copy and pasted it directly from my comments.

    “Claims to programs that are applied to a specific type of data in the pursuit of particular types of outputs do not present the same level of preemption threat.”

    True, it is a lesser level, but it is a level nonetheless and as such bye bye to such a claim.

    Who are you people with the balls enough to talk about preemption without going in for the whole tamal? You can’t just say that because jalepenos are a lesser hot pepper that they are good to give to someone who is allergic to hot peppers. Just as the patent system is allergic to software.

    “One could easily argue that all math is invented.”

    One can easily be mistaken about a great many things. As you proved in your article.

    “The following excerpt comes from Professor Robin Feldman’s forthcoming Harvard University Press book Rethinking Patent Law which will be released in 2012. ”

    How does one go about informing on a person for plagerism?

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