Bar to Courts: Please Define “Unpatentably Abstract”

By Dennis Crouch

Fort Properties, Inc. v. American Master Lease LLC, __ F.3d __ (Fed.Cir. 2012)(Judge Prost joined by Judges Schall and Moore.

American Master Lease (AML) owns a patent that covers a method of creating a tax-deferred real estate investment instrument. U.S. Patent No. 6,292,788. Claim 1 includes three primary steps: aggregating title to real property to form a real estate portfolio; encumbering the property in the real estate portfolio with a master agreement; and creating a plurality of deedshares by dividing title in the real estate portfolio into a set of tenant-in-common deeds with each of the deedshares subject to a reaggregation provision in the master agreement. This method is designed to take advantage of a federal income tax loophole that allows investment properties to be traded tax free in some circumstances.

This litigation arose after AML threatened Fort Properties with an infringement lawsuit and Fort Properties filed an action in the Central District of California asking for a declaratory judgment of invalidity. In a decision predating Bilski v. Kappos, the district court ruled the patent invalid for failing the machine-or-transformation test (MoT). On appeal, the Federal Circuit affirmed – finding the invention unpatentably abstract.

Unpatentably Abstract: Courts have long recognized patent claims as abstractions that tend to generalize and broaden the scope of a particular invention. That small level of abstraction is acceptable and encouraged. However, if a claim is too abstract then it becomes unpatentably abstract. At a conference this weekend, Chief Judge Rader, USPTO Solicitor Chen, and I held an interesting discussion on drawing that line. In my view, “preemption” is largely unhelpful because it falls into the same line drawing trap: A patent is only useful if it sufficiently preempts (i.e., excludes) others, but at some point too much preemption renders a claim unpatentably preemptive. I believe that all three of us see the current jurisprudence on abstract ideas as problematic. It leaves the courts and patent examiners without any real standards for determining an outcome other than asking whether the particularly claimed invention is “too much like Bilski, Benson, or Flook?”

Here, the appellate panel reviewed the tax strategy patent and decided that it counts as abstract because the invention is too much like Bilski.

We view the present case as similar to Bilski. Specifically, like the invention in Bilski, claims 1-31 of the ‘788 patent disclose an investment tool, particularly a real estate investment tool designed to enable tax-free exchanges of property. This is an abstract concept. Under Bilski, this abstract concept cannot be transformed into patentable subject matter merely because of connections to the physical world through deeds, contracts, and real property. . . . When viewing the claimed invention as a whole, the physical activities involving the deeds, contracts, and real property are insufficient to render these claims patentable.

Some of the claims included a computer limitation. However, the court held that limitation did not impose any meaningful limits on the claim scope for subject matter eligibility purposes. “AML simply added a computer limitation to claims covering an abstract concept—that is, the computer limitation is simply insignificant post-solution activity. Without more, claims 32-41 cannot qualify as patent-eligible.”

The problem with the court’s jurisprudence here is that “unpatentably abstract” is not defined. Rather, the court simply recited the core function of the invention and the conclusion that it is abstract.

About Dennis Crouch

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

309 thoughts on “Bar to Courts: Please Define “Unpatentably Abstract”

  1. Careful simple,

    IANAE is merely defending his ally in the great “war.” He is doing it in his typical slanting fashion of portraying you as the party for actions that he is party to. After all, that is what “they” do.

    IANAE, once again you are busted. Go back to your Tower!

  2. Everybody sees what they want to see.

    Yes, that’s why everyone else can see the stack of dead horses (some even in fetal postions) around your water trough and you cannot.

    But even as you close your eyes, how do you not notice the smell of those rotting carcasses?

  3. we don’t have minds willing to understand.

    IANAE, your snideness in the “we” is seriously misplaced. I am actively seeking to understand how MaxDrei contemplates having incongruent views on a matter that he posts on quite often (and in open disregard for understanding of a key difference that has been shared many times).

    What I am not willing to do is close my eyes and say “I cannot see.” That may work for “you” and whatever royal “we” you are contemplating, but please, do not make a misrepresentation that my exchange places me in the “not willing to understand” camp.

  4. Max, you need to bear in mind one key difference between our local law and yours – we don’t have minds willing to understand.

  5. MaxDrei,

    I need not scroll up to read Paul Cole’s recantation.

    I am asking for you to take a stand based on your posts. You are the one that “demands” no evolving on patent eligibility (your post at 3:21 AM).

    Choosing not to take a stand (thinking you can have it your way) simply is closing your eyes and saying “I don’t see.” That’s why I point out to you that this is intellectually dishonest. You cannot maintain your 3:21 AM position and then turn around and say you agree that Paul Cole is right and patent eligible subject matter is always evolving. By definition, you cannot have something “absolute” and “always evolving.” You must choose one or the other.

    Reread my post at 8:35. Think about it. Then give me your answer, not Paul Cole’s. If you decide that you agree with Paul Cole, then please recant your 3:21 AM answer and supply an answer that is congruent.

  6. Wishful thinking there Simple. Scroll back up to the top of the thread to read Paul Cole’s recantation on eligibility. Nothing to do with the state of the art, it is just that his view of “technical character” or “statutory subject matter” or “eligibility” (like the EPO’s) never stops evolving. Eligibility is drawing the line somewhere between inventivity in the fine arts and inventivity in the useful arts, and nothing to do with the content of last year’s patent filings. I think the distinction between fine arts and useful arts will remain, as long as there are some sentient humans around.

    So I think I can have it my way, and I still don’t see that I’m having it “both ways”.

  7. A bit of intellectual dishonesty MaxDrie, as you set an equation with, at the same time, “no ‘technological arts’ filter” but define this as “what is meant by ‘technical character’ is always evolving.”

    What happens if you drop the word “technical” from the equation? Your statement becomes meaningless.

    What then is technical?

    You seek to say (in essence) that this is undefined because the term is always evolving. But above, you have “demanded” that patent eligible subject matter must always be constant.

    You cannot have it both ways. This is not a matter of you “seeing” things in an EP sort of way; rather, this is a matter of you taking a firm stand on an issue.

    Does patent eligible subject matter evolve (as the understanding of “technical” evolves), or does patent eligible subject matter not evolve (as “You should not be sucking novelty and obviousness into the discussion of eligibility“)?

    Which is it? You cannot be a little bit pregnant.

  8. Difference from Monday to Tuesday rather overstates the situation and thus loses sight of the evolution of eligible subject matter.

    This is a nuanced view which is quite apart from novelty and obviousness.

    You see the trees fine, but cannot see the forest.

    You have set for yourself a tautology as eligible subject matter being an absolute thing rather than answer why.

  9. A note to Simon,
    Just so you know as a general rule I have asked for Green cards and then brought them back filled out. So knowing you already received my mailing and I haven’t received my Card back… Add it up!

  10. And Louwilda told me ohhhhhhhhhh it’s empty. but WIER sent it to me in the file that Larry Lynn opened when it was addressed to me!

  11. AHAHHHAAAH So the March 2, 1997 Document that I signed that just had a name and date to sign the rest being empty… was never mailed back by Harry Moatz… just an empty sheet..That must be it. Something was added to it and it must have gone to the Trademark side destroy my Trademark. But if my only Trademark I filed was changed in December without my knowledge or consent… I suggest that your Dime has a hole in it. Sort of like a Japanese coin.

  12. OFF TOPIC
    If I sent proof to Harry Moatz as to who was My Atty. on March 3, 1997 Having just signed an almost empty sheet that only had a signature and date to fill out..And i was told to fill it out. And Harry sent me back an empty sheet when he sent me back ( by mail) the 10 pages I faxed to the OED. and the March 2, 1996 Document was not in the mailing. But a sheet with some black marks was included in thew mailing. and all the other pages went through. Do you think he did that for a reason? And the Trademark side being separate from the Patent side… Why would Harry Moatz send me back an empty page when the others were very readable? Do you think maybe it was empty because it was now on the Trademark side of the USPTO? And maybe their was something added to the March 2, 1997 Page I was told to sign and Date? Would that be a crime?

  13. Why “wrong”?

    1. The EPO grants business method patents every week

    2. The EPC takes claims as a whole

    3. There is no “technological arts” filter in the EPC.

    4. There is no machine or transformation requirement in the EPC or in the jurisprudence under it.

    5. Process is a separate and independent category in the EPC.

    The EPO Boards of Appeal are using the mantra “technical character” as shorthand for the subject matter that Art 52 EPC reveals as “statutory”. The EPO has no Doctrine of Binding Precent, so what is meant by “technical character” is always evolving.

    Not only could the Judges in the USA “learn something” from the EPC, but they are actually doing so. Just look at the content of the stream of decisions they are issuing, and tell me where their evolving jurisprudence contradicts that of the EPC.

    But then I would see it that way wouldn’t I?

  14. To all Actual Inventors and the Patent Professionals that serve them. I would like to offer these words of encouragement inspired by the late Mahatma Gandhi.

    First they ignore you

    Next they laugh at you.

    Then they attack you.

    That’s when you wipe the floor with them!

  15. Wrong Maxie:

    Time may change the law. But as it stands now there are laws that do exist and we must respect and follow here in the America.

    1. Business Methods are Statutory Subject Matter.

    2. Claims must be taken as a whole.

    3. There is no technological arts requirement in the Constitution or the statute.

    4. There is no machine or transformation requirement.

    5. Process is a separate and independent category.

    These are the clear, precise well established canons of statutory subject matter for patents in the USA. Indeed, the EPO, could learn something from our laws.

  16. Why an absolute thing? Because, otherwise, one finds oneself arguing eligibility relative to the state of the art, different on Tuesday from what it was on Monday. You should not be sucking novelty and obviousness into the discussion of eligibility.

  17. Where does this “put it into a box” requirement come from?

    How “reasonable” is that?

    run tests, etc.,

    This can be done currently – with Nuijten’s work. And it can be done reasonably.

    You have not “answered” the question of what is the dividing line between “transitory” and “nontransitory.” All you have said is that one should be reasonable. This says nothing about where that “reasonable” line is. My answer with Nuijten paints a very reasonable line. But you are standing on the wrong side of that line.

  18. Why does Max keep saying EPO law is the same as US law? Maybe he listens to Ned too much.

    ::Shrugs::

  19. Leo Bloom

    On one of your links, Mr. Wheeler says:

    “I think that allowing patents for software and business methods was a mistake; patents were historically not allowed to cover general algorithms and business methods for a reason.”

    Leo it is my opinion that people that make such statements are ignorant of the fact that the very first patent was a business method.

    They are ignorant of the fact that every patent ever issued at its’ core is a process and is essentially directed to a business method.

    Methods of doing business, be they software, financial products or some other combination of the statutory categories are the very reason for the existence of patents!

    As I said before, there is a reason the Patent Office is under the commerce department.

  20. Good question.  I think I just answered it elsewhere.

    But WRT an article of manufacture, I think it needs to last for a time sufficient for the courts to determine whether the defendant made used or sold the article: run tests, etc., on the thing itself.

  21. "Are you really saying that anything "transitory" is not patentable?"

    As an article of manufacture, sure.

    Now, given that everything exists for a time and ceases to exist, I suggest that we have to reasonable in how long the thing has to exist.  If it last less that an instant, though, clearly we are not talking about anything that can be physically packaged and sold.

     

  22. I am pretty sure that signals created and sent out from the very first radio broadcasts are still in their “fixed” forms, traveling through space…

  23. Signal are not patentable as articles because they are not fixed. They are transitory.

    Are you really saying that anything “transitory” is not patentable?

    How long do you have before that computer in front of you becomes “transitory”?, that desk? that wall? that building? that anything?

    Everything is “transitory.”

  24. The display is a physical output and, IMHO, significant, just as the data coming from a physical source. As a whole, the process claimed in Abele claim 6 was just like the process claimed in Diehr: inputs, output and a novel algorithm in between.

    It might be helpful to consider the claims themselves and the holding of the court:

    “5. A method of displaying data in a field comprising the steps of
    calculating the difference between the local value of the data at a data point in the field and the average value of the data in a region of the field which surrounds said point for each point in said field, and

    displaying the value of said difference as a signed gray scale at a point in a picture which corresponds to said data point.

    6. The method of claim 5 wherein said data is X-ray attenuation data produced in a two dimensional field by a computed tomography scanner.
    We conclude that claim 5 is directed solely to the mathematical algorithm portion of appellants’ invention and is, thus, not statutory subject matter under § 101. We reach the opposite conclusion with respect to claim 6.
    The method of claim 6, unlike that of claim 5, requires “X-ray attenuation data.” The specification indicates that such attenuation data is available only when an X-ray beam is produced by a CAT scanner, passed through an object, and detected upon its exit. Only after these steps have been completed is the algorithm performed,8 and the resultant modified data displayed in the required format.9
    Were we to view the claim absent the algorithm, the production, detection and display steps would still be present and would result in a conventional CAT-scan process.”

  25. “You have said as much in that your views of signals as not being “manufactures.””

    I beg to differ. I beg strongly to differ.

    I agree with the analysis of the Federal Circuit that the physicality of the signal is not an issue. It is the fact that the signals have no permanent presence and are transitory.

    Now, you might think this wrong, but the rightness or wrongness does not depend on physicality but on the signal not being fixed, i.e., non transitory.

  26. The court said it was not insignificant post solution activity — contrasting the situation from Flook.

    I asked this for the contrast. Are you saying that you want mere display to be both significant and insignificant post solution activity? Choose a side and defend.

    The numbers themselves were not the invention.

    No one said this. This response has no point.

    There is a difference between the two cases.

    You are not making your case with your conclusory statements.

  27. Are you saying he displayed numbers in Abele were not old?

    The numbers themselves were not the invention.  In Abele, it was the manipulation of the data from the Cat scan that was novel, and it produced a new result.

    In Prometheus, everything was old but the meaning of the numbers on the report.

    There is a difference between the two cases. 

    From a patentable subject matter point of view, the real question is whether information is patentable.
     
     

  28. "Why?  Isn't "display" merely post solution activity?"

    The court said it was not insignificant post solution activity — contrasting the situation from Flook.
     

  29. The problem with Prometheus is all this is old

    Are you saying he displayed numbers in Abele were not old?

  30. The claim did not simply end in a number, but the display of a number.

    This is very important.

    Why? Isn’t “display” merely post solution activity?

  31. where the line falls to be drawn is pretty much the same in the USA and in Europe

    Except it is not. Our Supreme Court (and our Congress) has made this, well, obvious.

  32. within a “field of technology” aka “the useful arts

    Old canards that won’t go away.

  33. Not really. I think Rader made a big point about the human interactivity in Ultramercial. Here, in Abele, a claim ends in the display of a number, a number produced from real measurements where the measurements were transformed into digital values, manipulated in a program, and then displayed for a human to see.

    The claim did not simply end in a number, but the display of a number.

    This is very important.

    Circling back to Prometheus, it appears that the Prometheus claim may be patent eligible under this reasoning because it produces a report with numbers on it. The problem with Prometheus is all this is old, and the only difference between the claimed subject matter and the prior art is the particular values of the numbers.

    The part in Abele footnote 9 about the claim simply ending in a number without any hint that the number be used for anyhting has to be wrong. This seems to fly in the face of Flook.

  34. Here’s the conversation…. You have a WHAT? CALUNNNK… For those who don’t understand Calunnnk that is (Hang up.) And then he used someone elses Dime.

  35. I probably don’t even have to mention this but I will because I mentioned it so many times before. Nine days before I even signed anything… Then Four days later, then then Five Count em five days after that… and then perish the thought. Now that is three things done to speed things along. And two of them were done on who’s Dime? It wasn’t yours.And the third was surely to Harm!

  36. “And whether a crime or not, it’s just plain wrong.”

    Hey bro I didn’t ask you to spread your nonsensical made up “beliefs” about quantum physics. Yet whether it is a crime or not, it’s just plain wrong.

  37. “Well, that would up to an attorney to decide”

    When he gets around to deciding that it is a big ol’ fat nothing do let me know, I need all the lulz I can get.

    “Maybe identify theft, ”

    Lulz.

    “slander,”
    “libel,”
    “harassment”
    “online stalking. ”

    Lulz, lulz, lulz and o, lulz.

    In any event, David, go ahead brosensky. Also, keep on confirming that I was right. Don’t forget tho:

    link to google.com

    “and his business, reputation and name”

    You don’t have any business reputation or name bro. Sorry. But even if you did, I just made your business’s rep go up by about a point. From the 0 at which it rested.

    “Worried yet?”

    Nope. Lulz.

    “If I were you I would leave Mr. Wheeler alone.”

    I ain’t done jack to him yet old man, but if he, aka you, keeps up this ridiculousness then I may have to.

    “Oh and do you wish to take the same challenge I offered to Ned?”

    No ya tard, nobody wants to take your “challenge”. Or pingerdoodle’s “challenge” or NAL’s “challenge”. When will you tards learn?

    ” If so post your real name, and office number. I will call you and give you mine as well. ”

    I already have yours ya ar se. Whois gave it to me. But if you want me to give you a call sometime I can do that, I have a practically untraceable number to use. Which belongs to a friend who will let me use it and knows I am to be kept secrit. SUPAR SECRIT!

    “Or are you just a little toad hiding under a desk in the PTO?”

    I’m actually just a homeless man who lives on the side of I-95.

  38. Oh, you might be right, but it is dicta as the final step was a display, not just a calculation:

    The FULL quote is this:

    Indeed, the step of “measuring * * * line integrals of an incoherent propagation * * * through * * * a body” explicitly requires the same steps implicit in claim 6, viz., production of a beam and detection of the beam after it is attenuated by passing through a body. Moreover, while the display of claims 33 and 36 is only of a number, we have already disposed of the contention that the last step of a claim not be a number. See In re Taner,supra,overruling In re Christensen, 478 F.2d 1392, 178 USPQ 35 (CCPA 1973). See also n. 9, supra”

    And note 9 says:

    While we conclude that the resultant display is an important feature of the claimed invention, because it provides a more useful tool for a doctor’s diagnosis, for example, than would numbers alone, we do not rest our holding with respect to claim 6 on the “non-triviality” of post-solution activity. Even without the final step of displaying the data in a more usable form, “the fact that [the] equation is the final step is not determinative of the section 101 issue.” In re Richman,563 F.2d at 1030, 195 USPQ at 343 . Accord, In re Taner, No. 81-598 (CCPA June 10, 1982), overruling In re Christensen,478 F.2d 1392, 178 USPQ 35(CCPA 1973).”

    But then if you actually read In re Taner, it says that a signal is physical, citing cases where traces are drawing with the signal.

    The cases do not hold that the production of a number without more is patentable. That fact pattern was not before it.

    Together, I submit, the claim as a whole must still produce a physical result, even if it is only the the display of a number.

  39. Signal are not patentable as articles because they are not fixed.  They are transitory.  There is nothing in this to suggest that signals are not physical and that machines that produce signals are not patent eligible.

  40. Who kidnapped the regular posters and substituted this stuff?

    I thought I knew what I would be getting when I see postings from these consistent monikers? But this? This is not what I expected.

  41. Paul–

    The “meat” in your above post is the following passage:

    “It seems to me that there is a test, and that the test is the extent to which the claimed subject matter is tied to the physical world.”

    This passage contains two independent ideas:

    1) There is a test. This concept is not precedential–of course in any decision there exists a test, which effects the statutorily-articulated principles.

    2) The test is the extent to which the claimed subject matter is tied to the physical world. Without more, this is not precedential. Is it an exclusive test? Is it the MOT test? What kind of “tying” is required, and when? What is the required “extent” of the “tying”? This amounts to nothing more than a vague suggestion that there should be such a test, and that whatever that test actually is, the court feels that the claimed invention in this particular case wouldn’t pass it, if they knew or articulated exactly what that test was. A vague suggestion does not bind future tribunals in any meaningful way.

    Plus, we’re straying too far afield. Now we’re talking about your translation of the opinion, rather than about the opinion itself. Sticking to the opinion, it states that “…abstract concept cannot be transformed into patentable subject matter merely because of connections to the physical world through deeds, contracts, and real property.”

    In the first instance, every single patented invention is the “transformation of an abstract concept into patentable subject matter merely because of connections to the physical world”.

    That leaves deeds, contracts, and real property as somehow suggested to be patent-inadequate “ties to the real world”, in this particular case. But WHY are they inadequate? The court presents no analysis or explanation, and merely refers to Bilski. Are they all independently inadequate? Are they all equally inadequate? Are they always inadequate? What is it about them that makes them inadequate? What IS abstract? Where do you draw the line between the “abstract”, and the “tie”?

    This opinion affords no clues, nothing that can be specifically binding upon the consideration of a different set of facts. Sure, if asked, I could write a brief that could show that this holding should be applied in another instance–but it would be “weak sauce”, as they say. The ultimate reliance would be not on this opinion, but on Bilski.

    This opinion is simply business-as-usual, and independently contributes nothing to the general patent firmament.

  42. You have said as much in that your views of signals as not being “manufactures.”

    If signals are physical, and signals are constructed “by man,” how are they not manufactures? The notion of “tranistory” simply does not logically wash as a distinguishing point.

  43. Nice one Paul. Social engineering. I need some time to digest that. What straightaway comes to my mind though is that the West had the Enlightenment and the rest of the world didn’t. So the West can debate and criticise those who run society, and propose innovations in Government, while elsewhere that isn’t permitted. If the patent system could promote the progress of the Enlightenment to these unfortunate still unenlightened parts of the world, that help to the pursuit of happiness would be such a vindication of the value of a functioning patent system as to see off all those who want it abolished.

  44. This is a belated comment on later posts, and a confession that to a considerable extent I have changed my view.

    What caused the change? I will confess that when I wrote the various postings that I have made I had looked only at the decision, which seemed straightforward and understandable on its face. Just now I downloaded and looked at the patent in issue and have to confess that writing about a case without seeing the patent in issue is always a bad mistake. I am also influenced by other postings on this subject.

    When you look at the patent in issue you find that it is a well thought out and detailed document, not something that should too easily be dismissed as a mere triviality. Should people with such detailed and well thought-out proposals be driven entirely from the patent system?

    If you go back to the US constitution you find reference to the useful arts. In the days of the Founding Fathers I am not sure that the organization of society would have been numbered amongst the “useful arts”, even though the proper organization of the infant Republic was a matter of deep concern to them. But in the more than two centuries since that time economics and other social sciences have moved towards being genuine sciences although their results admittedly do not have the certainty and clarity of results in physics. But the wider question clearly arises: is it in the interests of society to drive those who make innovations in the social sciences from the patent system?

    Consider the infant automotive industry as an example. It was made possible by advances in internal combustion engine design, metallurgy and improved machine tools e.g. centreless grinding machines. But equally would automotive manufacturers ever have achieved the success that they did without the social institution of hire purchase which made it possible for customers to purchase the products of their mechanical ingenuity and attractive for them to do so? The answer plainly is not, and it must be acknowledged that our social institutions and our technology go hand in hand.

    The proper organization of corporations and business has been a bone of contention between left and right on the political spectrum for centuries. If a person devises a scheme for improved organization of a corporation which better balances the interests of staff, managers and shareholders so that the organization works better as a whole, is that person not deserving of a reward? Some of our social institutions are notoriously conservative (the small c is deliberate) and innovation leading to objectively better performance is to be encouraged.

    So there is a question that is fit to go to the Supremes: are the social sciences and the organization of society now to be numbered amongst the useful arts so that inventions in these fields should in appropriate circumstances not be dismissed as mere abstract ideas?

    It may be considered that the number of instances of this kind is likely to be few (but in the early days, it was thought that the World needed only one or two computers). It is to be hoped that if a case of this kind goes back to the Supremes, it will be a deserving case.

  45. For me it is clear that patent-eligibility is an absolute thing, unaffected by day to day expansion in the state of knowledge, the state of the art.

    We can delight in the thought that there are an infinite number of ways that something is inventive” or “obvious”. That planet Earth spins on an axis inclined to the plane of orbit around the sun was for a long time not obvious. People instead ascribed the seasons of the year to Demeter or Freya. There is however only one kind of inventive activity that is relevant to patentability namely inventiveness within a “field of technology” aka “the useful arts”. Cunning ways of drawing up legal documents are not patentably inventive, and nor is a novel way of trading in them. Call it “not tied to the physical world” if you like, but I agree with Paul Cole, that the background thinking where the line falls to be drawn is pretty much the same in the USA and in Europe

  46. Here is the earlier posting referred to:

    “The ratio decidendi, so far as I can see, is that the claimed subject matter is insufficiently tied to the physical world, as in Bilski. It seems that the test is a matter of degree where it is impossible to define precise boundaries.

    It was pointed out in Bilski that commodities and money were insufficient ties to the physical world, and the same was held to be true in the present case for deeds, contracts and real property.

    If we look at the recent cases, however, there are instances demonstrating a common pattern:

    Bilski – risk hedging
    Cominski – mandatory arbitration resolution
    Schrader – bidding at an auction
    Dealertrack – applying for credit

    It appears that if the claimed subject matter is entirely in the field of business administration, then the claim is likely to be held unpatentable. At the risk of provoking the more excitable amongst the contributors to this blog, the position in Europe is the same, and it appears from current US jurisprudence that our prohibition is not wholly irrational.”

    It seems to me that there is a test, and that the test is the extent to which the claimed subject matter is tied to the physical world. As is apparent, it is a somewhat subjective test, but that seems to be the key issue in the case.

    I will confess that I looked less closely into post-solution activity because that interested me less.

    As you probably know, in Europe we have an “any hardware” approach. So if what is claimed is being done on a computer or is recorded in a ROM, then it is ipso facto patentable subject matter. That does not help an applicant as much as might be supposed, because anything in the claim which is of an excluded nature e.g. a business method is not taken into account when assessing inventive step.

  47. defamation lawyer : “Just curious, AI, but why would Mr. Wheeler’s business, reputation, and name be harmed if patent professionals believed that he was the poster known as AI?”

    Well, thats why I said we would need to ask an attorney. But let’s say 6 and Ned Heller were able to repeat the lie enough that people reading the blog actually believed for a fact Mr. Wheeler was Actual Inventor on Patently O.

    Let’s say they then go on to defame Actual Inventor to the point that any association with that name is considered harmful. That certainly could hurt Mr. Wheeler’s business, reputation, and name

    Then let’s say that someone using the name Actual Inventor did something illegal or harmful on this blog or elsewhere, again it might very well in the mind of the public be perceived that it was Mr. Wheeler when indeed it was not.

    I don’t know if any of that is a legal case against 6 or Ned but it certainly is unethical for them to orchestrate, to say the least.

    Especially when 6 and Ned are only trying to divert attention from their losing positions on the law.

    6 can’t cite any Supreme Court precedent or a single case for his preemption doctrine.

    Ned can’t find a legal for basis or cite a single case for claiming that:

    The MOT is still the sole test or even the controlling test for 101.

    Business methods are not statutory subject matter.

    Claim dissection in any form is allowed at 101, 102, or 103.

    Or that useful arts, as used in the Constitution only applies to machines and transformation from the 1800’s.

    Ned, 6, and the like are frustrated beyond belief and angry because they have been beaten in the Courts and on this blog for many years now.

    So they are desperate to try anything to gain some traction for their causes and pet legal theories. Even at the risk of harming an innocent person’s reputation.

    And whether a crime or not, it’s just plain wrong.

  48. …if he can prove you made some of the 30,000 patent professionals that read this blog believe your false statements and his business, reputation and name has been harmed as a result.

    Just curious, AI, but why would Mr. Wheeler’s business, reputation, and name be harmed if patent professionals believed that he was the poster known as AI?

  49. Ned: “Let’s see if AI begins to complain about re tarded examiners.”

    Excuse me but that is 6, insulting language. I never say such. But since you still want to engage in this outing of commenters craaap, why not just take my challenge to debate the law under our real names?

    This is what you brag about right?

    This is why you say you are more credible than the other attorneys right?

    So come on, take the challenge Ned.

    You Gutless Wonder.

  50. I’ll get you started, Paul:

    Is it that “deeds, contracts and real property are insufficient ties to the physical world [to impart patentability]”, and if so, what precisely do you understand that to mean?

  51. Hey Ned, since you still want to harp on this outing of commenters, and posting under your real name non sense, are you going to take up my challenge to debate patent law cases under our real names?

    We can start with Bilski and Business Methods. Come on. I will wipe the floor with you again! Only this time in our real names.

    ::waiting::

  52. Paul–

    I’m disappointed in your response.

    Here I did your earlier post the greatest hono(u)r by responding in a thoughtful and detailed manner, and doing much legwork deconstructing the opinion, and what do you offer in return?

    A vague reference to what is likely a yet more vague post.

    I ask you once again: precisely WHAT do you believe in this decision is to be considered as binding upon future panels or courts?

    As another matter, I acknowledge and accept your own, as yet unstated, acknowledgement of your errors concerning the informational content of my earlier post, and that the post should not have been made.

  53. Hey, anon, the last time you posted a response to me asking about question 3, I said I would be happy to respond.

    Then I got bombarded by people who demanded that I respond without even knowing what the question was. So, I simply stop reading the posts for a time in disgust.

    If I deleted a post from you where you included question 3, I apologize.

    I reiterate that I look forward to discussing patentable subject matter with you, or its 102/103/112 variations, regarding computers and the like. Simply fire away.

  54. Ned: “AI, I find it hard to believe that think that your interpretation of Bilski was what Bilski actually said. This is where you constantly go off the rails and into the weeds.”

    No, Ned this is where you demonstrate to the world that you are a notorious intellectual dishonest beach. You know I did not post any interpretation of Bilski or even express an opinion on the abstractness and math issue, yet you continue to lie and say I did.

    So F you on that.

    Oh and how about the challenge to debate case law here under our real names?

    Why so called quiet on that?

    Oh and why did you cut and run on the DCAT posts up thread?

    No response to that eh?

    Until you straighten up and show some honest and integrity I am finished with you.

    Besides there are plenty of good attorneys here to kick you butt every time you get out of line.

  55. AI, I have no idea of which of the sock puppets is you. However, I have had some reasonable and rational discussions with Publius. This alone tends to suggest that he cannot be you.

  56. 6: , and precisely what is it he’s going to sue me for .

    Well, that would up to an attorney to decide. But I would think defamation for starters. Maybe identify theft, slander, libel, harassment, online stalking. I think some new bullying laws have been passed in the states he could get you on. Maybe he can get some good damages if he can prove you made some of the 30,000 patent professionals that read this blog believe your false statements and his business, reputation and name has been harmed as a result. Why Ned could be deposed and forced to testify against you. There might be issues with the PTO too. Worried yet? If I were you I would leave Mr. Wheeler alone.

    Oh and do you wish to take the same challenge I offered to Ned? If so post your real name, and office number. I will call you and give you mine as well. Then we can post under our real names and debate the law on this blog.

    Well, up for the challenge? Or are you just a little toad hiding under a desk in the PTO?

  57. AI, I find it hard to believe that think that your interpretation of Bilski was what Bilski actually said.  This is where you constantly go off the rails and into the weeds.

    Everyone, including Dennis in the OP, and Stevens in the dissent, and it appears Rader and the rest of the Federal Circuit, recognize that the Supreme Court did not clearly explain why the claims in Bilski were abstract.  Simply using math is not enough.  That was not the point at all about claim 1.  In fact, they mentioned that the concept of hedging described by claim 1 was notoriously old.  Now, I ask you AI, why did they say that?  What does novelty have to do with patentable subject matter?

  58. “But, 6, come on. You at least pretend to be a reasonable person. Does trying to exclude a massive group of patents from 101 based on a judicial exception when Congress has clearly had many chances to act make any sense?”

    Here’s the thing NWPA, I don’t really see it as excluding a massive group of “patents” from 101. I see it as excluding a massive area of “subject matter” from 101. And that I have no problem with. I’m sorry bro, I just really don’t. I feel like there are some things which are better off to leave unpatented so that we may enjoy innumerable different machines all performing that subject matter.

    What is so unreasonable about wanting a lot of different machines all performing that subject matter? I don’t see that there is anything unreasonable about it.

    And if we’re talking B claims, well they’re abominations in every single way you can imagine, so meh, I certainly don’t weep for them. Authors already have enough protection and if they need more then they need to go to congress not the PTO.

    ” I can tell you it is outrageous.”

    Here’s the thing NWPA, I agree with you in so far as the situation is unreasonable or outrageous. But the opinions are most certainly not outrageous, indeed they are too conservative. But like I say the situation is unreasonable. People have been patenting this stuff for years. I blame the courts, the PTO and the congress for the mess a thousand times more than I blame any applicant that tried to avail himself of the situation. On the other hand, this is what happens when your government screws up. And I’m not a huge fan of government, so I’m always kind of glad when their screw ups eventually get fixed.

    “Just read Diehr. The SCOTUS had a momeny of sanity and put into perspective what their judicial created exclusions were and why they should not be applied. They also said they could make it up and do it, but they would rather not be criminals ( I added that.) Obviously, the Cybersource 3 and Moore would rather be criminal like.”

    I’m going to have to disagree with you on your rendition of Diehr. It was a fairly simple case and they really didn’t say anything close to what you are putting in their mouths.

    But in any event, I’m sure Cybersource will work its way down into the examinertard training at the PTO soon enough. Gl with your litigation, I hope you get to appeal a lot and send up some cases for my lols.

    I am curious though NWPA, have you not considered simply going back to work in the useful arts and just say f it to this controversial stuff? I mean, really, there are plenty of useful arts to work in where 101 isn’t constantly threatening to kill all your work. Why not just work there?

  59. Ned: “the Supreme Court did not say what you said it said. That was your interpretation of what they said. ”

    AI: WTH?

    What did I say the Supreme Court said?

    What is my so called interpretation of what the Supreme Court said?

    All I have done is cite “exactly” what the Supreme Court said in Bilski about his claims being math and abstract.

    I also reminded you of the FACT that you play the f ool and pretend you do not know what the Supreme Court said about why Bilski’s claims were abstract, when indeed you do. Thus you are a liar Ned.

    Ned: “What you are missing is the difference between Diehr and Bilski. In Diehr, the math was applied to change a physical result. That was not the case in Bilski.”

    AI: Excuse me but I am not arguing that point one way or the other. What I want you to do right now is admit that the Supreme Court did give a reason for finding Bilski’s claims abstract, regardless of what you think about the reason.

  60. Basically; there is no there, there.

    But no one’s going to define, “there.”

    Investment real estate exchanges are not actually tax-free; they are tax-deferred.

    Tax liability on any gains remain; but they don’t have to be paid at the time of exchange.

    And one could fairly argue that such transfers are no more tax “loopholes” anymore than any other tax deferral and tax write off laws are.

  61. Ned,

    First, please stop calling me David. I am not this person. You and 6 show no integrity to go to a real persons web site, hijack their name and proceed to defame them this way.

    Second, If real names are so important to you then post a link to your real web site and law firm. I will then call you up and confirm. And follow up by posting my real name and web site. And you and anyone can call my office and confirm. The numbers should be public anyway.

    We can then proceed to debate any law case you want on the merits on this blog under our real names.

    So how about it? Up to the challenge?

  62. However, David, the Supreme Court did not say what you said it said.  That was your interpretation of what they said.  

    What you are missing is the difference between Diehr and Bilski.  In Diehr, the math was applied to change a physical result.  That was not the case in Bilski.

  63. Correction of Above: own wishful views of what he thinks the “Law” should be, with actual Supreme Court holding. In doing so he shows he has no respect for the commenters here and no respect for the law, as cited below.

  64. Leopold Bloom : “I think that allowing patents for software and business methods was a mistake; patents were historically not allowed to cover general algorithms and business methods for a reason.”

    Does that really sound like AI?”

    LOL What would be ironic is if Mr. Wheeler gets wind of this and decides to sue 6, and in the process 6’s identity gets exposed.

    That might even be grounds for being terminated from the PTO, if such thing can even happen to a Patent Examiner.

  65. anon: “It is sad to see that Ned indulges in the 6 outing party, while still neglecting to address the points I carefully laid out, following his request to set them as an email to him and that he promised he would answer.”

    Sorry to say but this is what one gets when you treat a dishonest person with integrity and respect.

    If Ned lies, I am going to call the SOB a li ar, not talk to him about spitting on the sidewalk.

    I Ned dares post any of his Bilski BS, I am going to cite the case and kick his butt up and down this blog.

    You can never be too hard on an unethical commenter like Ned.

  66. Publius: And to set the record straight, I am not AI, Actual Inventor or any other sockpuppet, sockie, sockie-troll, troll, or any such.

    It does not matter. This is 6 we are talking about. Ned’s genius. You have a better chance of having an adult intelligent conversation with a 10 year old.

    6 is probably just sulking and acting out because he has been discipled by his SPE for actually trying to use is own theories rather than follow the law.

    Both 6, and Ned simply can’t advance a discussion on the merits, or win a legal debate purely on the facts and case law.

    Ned thinks because he supposedly is using his real name that he can lie on this blog and conflate and twist the actual law with his own theories.

    See how Ned was caught in a lie in the Dealertrack thread by commenters other than myself and just walked away.

    See how Ned completely ignored that commenter anon once it became clear he could not lie his way out of the discussion and had to face the facts and law.

    Ned could not even finish debating the commenter Looking Glass when backed into a corner with logic and the case law.

    He just walks away , unaccountable, starts another thread all because he says he is someone called Ned.

    Ironically his accountable name has become synonymous with everything unethical, un reliable, and dishonest.

  67. Ned: “I will remind you, AI, that the presence of math is not sufficient to declare a claim unpatentable. Diehr had math as well.”

    Ha! So you DO know the Supreme Court in Bilski gave a reason for why the claims were considered abstract!

    I am not arguing whether they were right or wrong.

    Just proving how craaazy you are for continuously saying the Court never said why they thought the claims w’ere abstract.

    So Ned why do you lie like this???

    It’s ins ane.

    It’s insidious.

    And you need to stop!

  68. M. Webster, real signals are physical. If a claim ends in a signal, I have no problem. But if a claim ends in a number that a person has to read and interpret abstractly, I do have a problem.

  69. The number, please provide a cite to your quote. I find that quote quite interesting because In re Taner appears to have held exactly the opposite from what the quote suggests. I guoted the critical passage above at 5:49.

    Summary of the Taner quote: The claim processed signals and ended in signal. Board said the claim ended in a number. The Feds said no, that a signal was physical citing Sherword and Johnson:

    “In Sherwood, amplitude-versus-time seismic traces were converted into amplitude-versus-depth seismic traces. Johnson involved a technique for removing unwanted noise from seismic traces to form noise-free seismic traces. In both cases, this court found that, though appellants’ claims recited a mathematical algorithm for manipulating seismic data, the claims were, as a whole, drawn not to a method of solving that algorithm but to a process of converting one physical thing into another physical thing, and in Sherwood expressly recognized that “seismic traces are … physical apparitions.” 613 F.2d at 819, 204 U.S.P.Q. at 546. That those “physical apparitions” may be expressed in mathematical terms is in our view irrelevant.”

    Are we to now believe In re Taner, in a way, overruled Flook no longer requiring that the signal be physical?

  70. I haven’t run into any serious 101 problems at the PTO. District courts are a different story.

    But, 6, come on. You at least pretend to be a reasonable person. Does trying to exclude a massive group of patents from 101 based on a judicial exception when Congress has clearly had many chances to act make any sense?

    You are not a lawyer, but I am. I can tell you it is outrageous. Just read Diehr. The SCOTUS had a momeny of sanity and put into perspective what their judicial created exclusions were and why they should not be applied. They also said they could make it up and do it, but they would rather not be criminals ( I added that.) Obviously, the Cybersource 3 and Moore would rather be criminal like.

    There just no worming your way out of it. This is the only interpretation that fits in with U.S. jurisprudence. (I knew that Moore was going to be trouble from the start because she had almost no actual experience prior to being appointed.)

  71. Oh but hey NWPA, have the tards over in the software artz started rejecting you a lot under cybersource yet or have they just ignored it? I know the BPAI has started but I wonder about the AU’s.

  72. “There is no separate theory of operation that would allow a different machine. The machine is implementing the theory of operation.”

    Right, so you’re doing exactly what they don’t want to allow you protection on. Precisely, and specifically what they DO NOT WANT. And the reason they don’t want it is so that a different machine can be built that would implement the theory of operation of the machine. Precisely what we want.

    How you do not understand this is quite beyond me.

    In any event, you seem to think that since your “art” involves “needing” protection for exactly the thing our policies are against granting protection for we should make an exception for your art. I, personally, see no reason to.

    “meant to be narrowly applied to on rare occassions ”

    I must have missed that part in Benson, Flook, Diehr and Bilski. It is “meant” to be applied whenever some tard tries what they’re prohibiting. In recent years the number of people trying it has gone up thanks to a Federal Circuit mishap. Big whoop.

    ” duely passed by our representatives in congress ”

    More like my grandfather and father’s reps. I wasn’t even alive.

    “Diehr said it all: we could be criminals and except information processing from patentability, but we should be judges and not legislators and recognize that this is congress’s job and not ours.”

    Diehr said that?

    “The Cybersource 3 and Moore are acting like congresspeople and not judges.”

    Because they tried to help you out? Hey bro they could have 101’d ALL of your B claims out of existence by noting that products don’t get to be distinguished by what a different product or apparatus does.

    On that note, as a matter of fact, I happened to find an article written back in 1994 explaining the “reasoninglol” as to why B claims are allowed to distinguish a product in terms of steps another apparatus does. It all goes back to a case where a CLAMP was claimed and in the claim there were some limitations about the thing it was clamping iirc. The way the clamp had been made would allow the thing it was clamping to do a certain thing whereas previous clamps would not. And the CAFC or CCPA said that the office could not ignore the limitations effect on what had to be the structure of the clamp. And funny enough, that decision is fairly non-controvertible and I wouldn’t argue the result in that case. However, this led to the B claim nonsense that we have today which is very much controvertible and is most certainly awaiting a court that construes the claims properly to end them.

    That same articlelol explains how since microelectronic devices are too small to see yet can still be claimed they feel like their little dips should be too. I had to lol@that because as we all know, all those microelectronic devices have to be clearly depicted and their structure laid out in fairly exacting detail whereas there is no B claim that has ever had such set forth.

    But anyway, I have digressed so I will stop there.

  73. I know right? That’s the only thing that doesn’t jive with our lovable AI here on this site.

    However, you will note that AI has never, to my knowledge, posted on here whether or not software SHOULD be patentable. He is always going on and on about how certain things, iirc software included ARE patentable. I think AI a man who does have a brain, even as reluctant as he is to show it on here. So I do not find it too hard to believe that he is on board with getting rid of the historical anomaly of software patents even if he does believe them to currently be patentable.

    Upon the weight of the evidence before me I find it quite impossible to not conclude that AI does in fact share a physical body with one David Wheeler. The chances that he is does not in fact so share a body are astronomically small.

    Let’s review shall we? There are very very very few people that put their “cheers” after their “p.s.” as AI does because you have to be a tard to do it wrong like that. People that say the previous thing and also say with some regularity that they pounded x “into dust” are rarer still. People that have completely wacked views on quantum mechanics etc. that just so happen to be exactly what AI espouses are also rather rare. People that have all that and an interest in model airplanes are even rarer still. Combine that with an interest in certain claim types? Come on, there is only one person in the 7 billion alive that has all those traits. But, it’s true, one would expect AI to not speak out against any patents. Even software patents. However in that exact same document, you will find a section called “Anti-patent?” where he specifically wants to make sure everyone knows he isn’t anti-patent just because he doesn’t like software patents. Yeah that’s how AI would shoot down some software claims.

  74. On one of your links, Mr. Wheeler says:

    “I think that allowing patents for software and business methods was a mistake; patents were historically not allowed to cover general algorithms and business methods for a reason.”

    Does that really sound like AI?

  75. Publius,

    +1

    It is sad to see that Ned indulges in the 6 outing party, while still neglecting to address the points I carefully laid out, following his request to set them as an email to him and that he promised he would answer.

    On that thread I challenged Ned to live up to his self-professed “Respect.” I politely and patiently awaited an answer that, to this day, has not been forthcoming. I gently guided a clear expectation and diffused the expected gamesmanship, leaving no doubt as to what level of integrity and “respect for the law” would be accepted in an answer.

    Do I really need to point out the lack of accountability when one does not do as promised?

    The idea that accountability merely comes from the name and not the actions is indeed “fooling yourself.”

    Expecting me to not notice the lack of answer, while continuing to ploy the same rhetoric on succeeding threads is attempting to fool me.

    Ned, while you may continue to speak volumes (and you do in quantity), what you say also comes from what you do not say, as in, the answers you do not provide. You want to make a “big deal” of people demanding answers, of flying off the handle when they don’t get them. I trust you see the difference in my “demanding” only that which you promised to deliver. A promise left unfulfilled.

    That path, that admittedly difficult path, still awaits you.

  76. As much as I am impressed by the tour de force cognitive effort by Inviting Body Punches (well done, IBP), I am inversely impressed with Malcolm’s typical absence of legal prowess in his “Whatever” ends-justify-the-means type of comment denigrating “can’t think of a single useful art whose “development” would be inhibited by this decision” mentality, which quite misses the impact from Inviting Body Punches that law should be a reasoned venture, not some drifting, social/cultural-sentimental-policy-of-the-day I-know-it-when-I-see-it go-ahead-and-make-a-guess effort.

    I can’t think of anyone who would be surprised by the low level of Malcolm’s prowess. Can you?

  77. What is the public policy as stated in Haliburton? So that a different machine can be built that would implement the theory of operation of the machine. In information processing the two have merged. There is no separate theory of operation that would allow a different machine. The machine is implementing the theory of operation.

    So this judicial exception of abstract idea that is meant to be narrowly applied to on rare occassions over rule the laws of this nation duely passed by our representatives in congress should not be applied in information processing cases.

    In fact, 112 is the appropriate statute to apply. Diehr said it all: we could be criminals and except information processing from patentability, but we should be judges and not legislators and recognize that this is congress’s job and not ours. The Cybersource 3 and Moore are acting like congresspeople and not judges.

    Not sure why the patent community is so dense that few see this issue clearly. Maybe it is because there are so many paid lobbyist on these boards ($MM, $Ned, etc.) that cloud these issues.

    And, 6 pack, Benson did invoke the natural phenomenon judicial exception that should be narrowly applied as it is circumventing the laws of our nation, but the Bensonites were so ridiculed that they could not withstand the on slaught of the decent people and turn their criminal little minds to the abstract idea exception.

  78. What is the public policy as stated in Haliburton? So that a different machine can be built that would implement the theory of operation of the machine. In information processing the two have merged. There is no separate theory of operation that would allow a different machine. The machine is implementing the theory of operation.

    So this judicial exception of abstract idea that is meant to be narrowly applied to on rare occassions over rule the laws of this nation duely passed by our representatives in congress should not be applied in information processing cases.

    In fact, 112 is the appropriate statute to apply. Diehr said it all: we could be criminals and except information processing from patentability, but we should be judges and not legislators and recognize that this is congress’s job and not ours. The Cybersource 3 and Moore are acting like congresspeople and not judges.

    Not sure why the patent community is so dense that few see this issue clearly. Maybe it is because there are so many paid lobbyist on these boards ($MM, $Ned, etc.) that cloud these issues.

    And, 6 pack, Benson did invoke the natural phenomenon judicial exception that should be narrowly applied as it is circumventing the laws of our nation, but the Bensonites were so ridiculed that they could not withstand the on slaught of the decent people and turn their criminal little minds to the abstract idea exception.

  79. Mo(o)re Tests: “No it is not. I recognize that as the DCAT in operation.”

    Ned knows full well that there is no MOT Test in Diehr. The dishonest lil weasel likes to purposely conflate In re Bilski’s upholding of the PTO’ created MOT Test with the fact that the presence of machines and transformations in Diehrs process were a clue to statutory subject matter. He knows that in Diehr, as in every 101 Supreme Court case machines and transformations were ONLY the clue and not the requirement, and certainly not “the” test.

    Ned knows that the DCAT, Diehr Concept and Application Test, is the controlling analysis and test for 101 subject matter and not the CAFC MOT.
    None the less the slippery snake will still try and mix his own wishful views of what he thinks the should be, with actual Supreme Court holding. In doing so he shows he has no respect for the commenters here and no respect for the law, as cited below.

    See the cite history as follows:
    ( Diehr) : It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection. See, e.g., Funk Bros. Seed <450 U.S. 188> Co. v. Kalo Co., 333 U.S. 127, 76 USPQ 280 (1948);Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45 (1923); Cochrane v. Deener,94 U.S. 780 (1876); O’Reilly v. Morse,15 How. 62 (1853); andLe Roy v. Tatham, 14 How. 156 (1852).

    ( Bilski) Page 14 : Finally, in Diehr, the Court established a limitation on the principles articulated in Benson and Flook.

    (Research Corp): Indeed, this court notes that inven- tions with specific applications or improvements to technologies in the marketplace are not likely to be so abstract that they override the statutory language and framework of the Patent Act.

    (Ultramercial): Although abstract principles are not eligible for pat- ent protection, an application of an abstract idea may well be deserving of patent protection. See Diehr, 450 U.S. at 187 (“an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection”)

  80. NED: Using Diehr as a template, the boundary between and unpatentable mental step any patentable mental step becomes clear.

    AI: Ned, you are wrong! There is NOTHING in Diehr that allows you to single out steps in a claim as patentable mental steps and “unpatentable” mental steps.

    N O T H I N G!!!!

    This is tantamount to claim dissection which is not allowed at 101, 102, or 103!

    So STOP IT!

    And before you go on your customary rant of attacks, or accusing me of being the Green Goblin, or whatever the He LL you are peddling to cover up your intellectual dishonestly, please allow me to B Slapp you in the face with the proper citations from Diehr that prove you are wrong, and I am right, as usual.

    SCOTUS : “In determining the eligibility of respondents’ claimed process for patent protection under §101, their claims must be considered as a whole. It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. This is particularly true in a process claim because a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made.” Diamond V. Diehr.

    AI: Understand that Ned? Claims as a whole! You don’t dissect or parse claims into patentable and unpatentable mental steps. EVER! If you DARE say or imply otherwise I challenge you to cite where the Supreme Court has held such. And just for kicks here is another hard right to the head from the Court.

    SCOTUS: “The fact that one or more of the steps in respondents’ process may not, in isolation, be novel or “independently eligible” for patent protection is irrelevant to the question of whether the claims as a whole recite subject matter eligible for patent protection under §101. ” Diamond V Diehr ( Emphasis Added)

    AI: Did you get that Ned? The SCOTUS specifically said “independently eligible” in it’s holding. So stop discussing whether claims are independently patentable. PERIOD!

    Now consider yourself B Slapped with the law. You can go into hiding mode now until you are ready for your next but kicking.

  81. Really 6.

    And to set the record straight, I am not AI, Actual Inventor or any other sockpuppet, sockie, sockie-troll, troll, or any such.

    I simply believe what I post, and post what I believe. I don’t post on a lot of subjects, because quite frankly, it just isn’t worth it to me.

    I do post on issues of anonymity and its relation to veracity. If you want to actually discuss these toppics, by all means we can discuss them. I would love to hear your view of how posting in your real name establishes credibility or accountability. I really would. Ned and I have had some discussions on this in the past. My views are not radical, nor are they unreasonable. I am not sure that this type of discussion would interest you though, as your attempts to muckrake do not indicate a sense of the historical perspective on anonymity that would necessarily serve as a baseline to any intelligent conversation.

  82. “http://www.patentlyo.com/patent/2012/02/supreme-court-no-move-yet-on-denying-human-gene-patents.html

    link to patentlyo.com

    Clear examples of goalpost moving, strawman erecting and downright lying by Ned Heller.

    Are you now saying that you are a stalker as well Ned?”

    AI: Yup, that’s typical Ned Heller. He accuses you of doing what he does, WHILE he is doing it!

    It’s so insane it’s almost awesome.

  83. Ned: ‘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.)”

    AI: The Supreme Court gave the answer to everyone. And I have posted it here many, many, many, many times for you. And will do it again. The answer is….

    DRUM ROLL
    .
    .
    .
    .
    .
    .
    .
    .
    .

    MATH!!!!

    It is quite insane of you to never acknowledge the answer after it has been provided for you thousands of times, then say no one has answered it.

    Regardless here is the cite ( something you can’t do) for 10,987th time!

    4
    BILSKI v. KAPPOS

    “The concept of hedging, described in claim 1 and reduced to a mathemati- cal formula in claim 4, is an unpatentable abstract idea, just like the algorithms at issue in Benson and Flook.”

    “This is an unpat- entable abstract idea, just like the algorithms at issue in Benson and Flook. Petitioners’ remaining claims, broad examples of how hedging can be used in commodities and energy markets, attempt to patent the use of the abstract hedging idea, then instruct the use of well- known random analysis techniques to help establish some of the in- puts into the equation. They add even less to the underlying abstract principle than the invention held patent ineligible in Flook. Pp. 12–”

  84. “This policy basis does not exist for computer implemented information processing. DOES NOT EXIST.”

    I am earnestly curious how it does not exist for computer implemented information processing.

    “There was a time when some tried to tie Benson to a natural phenomenon, but that was shot down and they were left with abstract idea. ”

    Kind of like it actually says in the Benson decision? Wonder how that could have happened?

    “We are left with the courts applying a judicial exception to attempt to try and wipe out a large areasof patents. ”

    So you say…

    “Criminal minds the Cybersource three should be impeached. Moore is a criminal like mind.”

    Martin, bro, this is starting to drive you a little crazy isn’t it? You need to see a professional about this bro.

    “But why is that”

    Because we want lots of different implementations for a given abstract idea in the marketplace bro.

    “By the way in the opinion here, there is clear mix up of 101 and 103. But with the likes of Moore on the panel it isn’t supriing.”

    Oh, right, how did everyone else miss that?

  85. Righto AI. I’ll let the interwebs judge you and the evidence as they will. But yes, I know you’re not David A. Wheeler, but you two do share the same physical body. He is a mild mannered programmer with a personal website and who may just happen to have an alternate personality that calls itself “AI” that only comes out when he’s trolllolololing on PO and when he posts his amatuer scientist outlook on his supar secrit website.

    And, surprise surprise, it looks like he’s gasp, an ACTUAL INVENTOR. Well, as of yet unconfirmed it seems since I can’t find the actual patent that issued from this pgpub, but still.

    link to google.com

    Looks like he did a stint in Spokane. And, surprise surprise, the application just so happened to to be filed or was published right around the same time AI showed up on these here forums. Why is he so concerned with 101/computer patent/CLAIMS AS A WHOLE issues? Well, here is claim 1:

    1. An improved windshield washer fluid dispenser for selectively filling a vehicle windshield washer fluid reservoir, comprising:

    a chassis with an interior space defined by the chassis;

    an access door to access the interior space of the chassis, wherein the access door can be selectively locked;

    a power source capable of rendering electric power to operate the dispenser;

    a removable drum within the interior space, the drum being capable of containing a quantity of windshield washer fluid;
    a pump, a one or more plumbing fixtures, a hose and a selectable nozzle to selectively dispense the contents of the fluid container;
    a means for verifying credentials for use of the windshield washer fluid dispenser;
    a ready light to alert a user that the windshield washer dispenser is in a condition ready for usage;
    a programmable logic circuit which energizes the pump, which in turn pumps a portion of the quantity of fluid to be dispensed from the windshield washer fluid dispenser into the reservoir through the hose and the selectable nozzle; and,
    wherein the programmable logic circuit further provides configurable functions with respect to the ready light, the card reader, the pump and the valve.

    But in any event I won’t comment on the validity of this hea claim as that is a question for a court.

    However, I will say this, AI you sir are a ta rd. And as to whether or not this David chap is or not I’ll let the interwebs decide.

  86. Nice straw, except that’s not the legal position.

    Your “restatement” at 3:26 is equivalent to excising the mental step completely from a claim. That is clearly not the law, and the expose called on (which you never seem to get around to providing), has to do with why this is so.

    I do not need this outlined dozens of times. Just once would do (as long as you can stay on point, and stay away from the straw).

    Do you realize that if you take the last letter of straw and the first letter of man and spin them around really fast you get MM?

    It’s not a coincidence.

  87. This of course is the familiar MOT test in operation.

    No it is not. I recognize that as the DCAT in operation.

    Also, just because the MOT test is passed, patentable subject matter is not assured.

  88. Mr. Nuitjen,

    For your enjoyment:

    phys·i·cal adj \ˈfi-zi-kəl\

    1a: of or relating to natural science
    1b(1): of or relating to physics
    1b(2): characterized or produced by the forces and operations of physics

    2a: having material existence; perceptible especially through the senses and subject to the laws of nature.

    Last I checked, energy and waveforms relate to the natural sciences, relate to physics, are characterized or produced by the forces and operations of physics and even are perceptible through the senses.

    It is too bad that the legal system so misunderstood your case.

  89. The policy basis for the abstract idea was that it would preclude others from building alternative machines that worked off of the same principle. That was the policy basis. See Haliburton that explains this very explicitly.

    This policy basis does not exist for computer implemented information processing. DOES NOT EXIST. There was a time when some tried to tie Benson to a natural phenomenon, but that was shot down and they were left with abstract idea.

    Think about the implications of this. The policy basis is no longer present. We are left with the courts applying a judicial exception to attempt to try and wipe out a large areasof patents. Criminal minds the Cybersource three should be impeached. Moore is a criminal like mind.

    So, are they left with? They have to say that we don’t want to preclude others form doing it. But why is that?

    By the way in the opinion here, there is clear mix up of 101 and 103. But with the likes of Moore on the panel it isn’t supriing.

  90. I am not David A. Wheeler of Vancouver, WA. And Publius is quite right. It does not matter. Except that you and 6 might proceed to libel, slander and defame an innocent person on this blog. But this is just a ruse to turn the debate away from the fact that you can’t provide case law, logic or facts to back up any of your legal theories. So go go ahead and continue to call me names. I will continue to call you for citations.

  91. we have already disposed of the contention that the last step of a claim not be a number. See In re Taner,supra,overruling In re Christensen, 478 F.2d 1392, 178 USPQ 35 (CCPA 1973).

    But then again, the Freeman-Abele transition in the 101 game is old news…

  92. There one will see goalpost moving, strawman erecting and shear unadulteratedly lying as would expect of obsessed stalkers.

    From the looks of it, you have just described yourself on the two posts:

    link to patentlyo.com

    link to patentlyo.com

    Clear examples of goalpost moving, strawman erecting and downright lying by Ned Heller.

    Are you now saying that you are a stalker as well Ned?

  93. historically the Feds have looked to the output as well. That has to be physical, and not just a number.

    Definitely not.

    In re Allapat, for one (waveform on oscialliscope is not “physical”). Another, I cannot recall the case at the moment was in regards to digital images of bones. The bones were not transformed, but the digital images (a non-physical entity by the way), were. Another example (which I swear I have seen put to you before) is encryption algorythms.

    A court deciding to “view” signals as physical does not change what they really are.

    Three quick points just off the top of my head.

  94. As any (and all) of this shows, posting in your own name is meaningless.

    There is no sense of authority that innures. There is no “held accountable” that magially happens. One is not guided to be more or less truthful, or adhere to any visible difference in behavior.

    “Outing” or the threat of “outing” is juvenile. Especially as it comes from someone who does not use there own name. Such “name” games are a smokescreen. Say what you mena, mean what you say. Be able to defend what you say. Or not. None of that matters to the signature at the top of the post. If you think it does, then you are only fooling yourself.

  95. And the funniest thing of all, is the Families threw me away are the ones that think they have a right to what’s mine. Issue Fees Matched LOLOLOL! in 2006! I thank the Government for making you show yourself!

  96. Oh, and I left out the most important revelation. Ned Heller now says he does NOT believe:

    The Supreme Court held ; business methods as non statutory.

    DISCLAIMER AT Feb 28, 2012 at 06:11 PM still applies.

  97. Okay, I see that you have repented. Perhaps I missed it in another thread. But for the record let it be known that Ned Heller now says he does NOT believe:

    The Supreme Court Upheld the MOT as “the” test.

    The Supreme Court allows claim dissection at 101, 102, or 103

    The Supreme Court supports Malcolm’s mental steps test or any incarnation thereof.

    DISCLAIMER: The preceding is subject to change at any time as Ned may flip flop, say the above using different words, or as was proven in the Dealertrack thread by numerous commenters, just plain lie.

  98. 6, like Ned it appears you have gone quite mad.

    No, those are not my sites and I am not clicking on those links.

    When do I say cheers?

    Oh..never mind. Just remember that if your cite your phoney pre-emption doctrine I will demand proper pin-cites to actual case law just like I do from Ned. And if you dare dissect my claims or violate any Supreme Court precedent, I will take you to the board and if need be all the way to the high Court itself. But I don’t think it will be necessary as your SPE probably does a good job at spanking you when needed.

  99. “historically the Feds have looked to the output as well”

    Which is why the Feds have historically been tards.

    In any event, check the comments way above for links to AI’s sites and ID.

  100. AI, all of that list comprises a complete mischaracterization of anything I have said.  You have asked me to support things I did not say.  You have asked me to provide citation support for your characterization of my positions, not my positions themselves.  

    This is why I almost refuse to talk to you, AI.  It never ends.  I have to spend an enormous effort just to set the record straight about my positions and your positions and the like.  It an endless process that repeats itself every single time.  

    I can only ask you to stop it.  Please!!!!!!   You are not an honest broker and not an honest man.  Not at all.  

    Bye.

  101. Regarding AI, no I did not see that.

    Regarding data gathering steps, regardless of their physicality, historically the Feds have looked to the output as well. That has to be physical, and not just a number.

    Compare, In re Abele to In re Taner to In re Christensen.

    It seems to me that the Feds placed great emphasis that the output of the method be physical regardless of that the source of data claimed be physical and/or involve transformation. The purely conventional data gathering was not sufficient to convert a process that ended in a calculation of a number in to a patentable process.

    For example, consider this from In re Taner:

    “Though the board conceded that appellants’ process includes conversion of seismic signals into a different form, it took the position that “there is nothing necessarily physical about `signals'” and that “the end product of [appellants’ invention] is a mathematical result in the form of a pure number.” That characterization is contrary to the views expressed by this court in In re Sherwood, 613 F.2d 809, 204 U.S.P.Q. 537 (CCPA 1980), and In re Johnson, 589 F.2d 1070, 200 U.S.P.Q. 199 (CCPA 1978), where signals were viewed as physical and the processes were viewed as transforming them to a different state.”

    Taner: link to scholar.google.com

    Abele: link to digital-law-online.info

    Christensen: link to scholar.google.com

  102. Ned this is over the top even for you. All these dramatics simply because I consistently ask you to provide citations for the actual law that shows the Supreme Court held ;

    business methods as non statutory.

    Upheld the MOT as “the” test.

    Allows claim dissection at 101, 102, or 103

    Supports Malcolm’s mental steps test or any incarnation thereof.

    Every-time you state or imply any of the above I will post and ask you for citations. That’s not stalking. That is holding you accountable for your words and demanding that show respect for the actual law and the members of the blog that post and read here.

    So knock off the phony umbrage and victim game.

    Try being honest.

    That’s much easier.

    And most important, either stop making or implying the above statements, or provide proper pin-cites to back them up.

  103. I’m not sure if it is the administration step or not Ned. I forgot the format of the claim. But the whole subject matter was dealing with a situation that only arises after you put some toxic “medicine” in the patient.

    “So, what about seismic exploration where the novelty is in analyzing the measurements from an induced acoustic wave. ”

    Analyzing data is not seismic exploration nedo. Collecting the data by inducing a wave and then sensing the return wave and collecting data is though.

    “That is enough as well to make any new math tagged on the end patent eligible?”

    I think you mean a claim to inducing a wave, sensing the return wave, recording data from the sensing, and then doing some novel math? Something like that?

    Meh, it might be. If that novel math has other applications, like, for instance, in judging hotdogs, guiding cars, etc. which are not being claimed. At least in that situation you’re not totally preempting and so long as you get around Flook and your use of field of use limitations then you could probably do it. If the math is pretty much only useful in that one little situation tho … you seem to have just preempted all uses of the math. That’s a bad situation to find yourself in cause your claim is going down. Period.

    In other news did you see I found AI’s secrit ID?

  104. ARGH! I don’t want to hear those terms anymore, I can’t even stand seeing my brief comment above! Bunk!

    WHY can we not just stick to the language of the statute? We need not translate into gobbledygook judge-speak.

  105. In the end I’m rather surprised that JAOI is not the same person as AI. JAOI appears to be much richer than AI and wisely accepted my proposition for him to stfu or have me out him. In your case however AI, I didn’t feel like any such deal was warranted since you’re all the time picking on Ned. Maybe now that you’ll be posting under your own name for all intents and purposes you’ll stop fin with Ned. I doubt it, but perhaps. We’ll see.

  106. 6, in your view, the administration step is what makes this not a natural phenomenon.

    So, what about seismic exploration where the novelty is in analyzing the measurements from an induced acoustic wave.  That is enough as well to make any new math tagged on the end patent eligible?

  107. Ned–

    2 things:

    First, I could swear that I provided you an answer to that question somewhere. I know that might drive you nuts, and for that I apologize. I’ll try looking for it later.

    Second, No, that is not abstract.

    Abstract = not machine, article, composition, or process; OR

    Abstract = lack of substantial utility

    and

    Preemption = total lack of any specificity of utility

  108. Malcolm, or in the words of the Supreme Court, the data gathering steps, albeit transformative, are insignificant data gathering steps presented to the only subject matter the patent owners claimed to have invented: the natural correlation, which is a phenomena of nature, the discovery of which no one can monopolize.

  109. Myriad better hammer hard on abstractness because that is where they’re going to most likely lose. As I’ve noted time and again. They’re trying to patent a correlation iirc, which is an abstract concept even though it does not occur in nature. It obviously does not occur in nature because it requires man’s intervention to get the toxic drugs in the human in the first place.

  110. IBP, If you will observe your post that twice I followed your post with a specific question: how would your analysis apply Bilski. I received no response that I can recall. Here, for the sake of simpleness, is my question for a third time:

    “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.)”

  111. Oh look, here he is using his irl name.

    link to dwheeler.com

    where he even cites to his own Dedoimedo “site” for some references.

    Looks like he writes a lot of articles

    link to chronicle.com

    link to dwheeler.com

    So I guess from now on we should just go ahead and call him David instead of AI.

    You guys might be wondering, how did 6 do that omfg? Simple, first you find website of tard by googling whatever tard thing he says. In this case, neutrinos thought. Then you do a whois to find out all you can about the mysterious webmaster, in this case, where he lives, where he foolishly registered his company, Vancouver WA. Then simply google the tard’s website name with the address. Bing bing bing things start a poppin’ up. Review things, things are written in same style, there you have your man.

    Oh, and thanks for updating your site last time I ragged on the use of “IP” AI.

    link to dwheeler.com

    Also I’m glad to have you on board:

    link to dwheeler.com

  112. Definitely AI’s website:

    link to dedoimedo.com

    Notice the “cheers” at the end like he likes to do.

    link to dedoimedo.com

    Cheers after P.S.

    link to dedoimedo.com

    We all know AI wrote the book on trol ling, but here it is laid out in black and white. Notice the trol lolololol that isn’t that popular but which I posted on this site and he found out about. And the misunderstanding of several of the memes.

    link to dedoimedo.com

    Why he is all up in arms about patents for softwarelolz.

    link to dedoimedo.com

    He would sure get along with my dad. I’m sure they could talk about neutrinos and model airplanes all day long.

    link to dedoimedo.com

    Notice he just beat it “to dust” as he so often beats things around here.

    link to dedoimedo.com

    His views on quantum mechanics, such as they are.

    In any event, I rather enjoy your site AI, it is good for lols. And it is a lot better than Michael R. Thomas’s site.

    Oh and btw, I credit Dedoimedo, aka AI with those articles.

  113. 6: Yeah I know, just like you have a masters in physics,

    AI: No

    6: mathematics,

    AI: No

    6 bio,

    AI: No

    6:chem,

    AI: No, but Neuroscience is interdisciplinary and draws from all the above fields.

    6: and a JD as well as an MD.

    AI: No, no, but I have proven to be smarter than you when it comes to the application of patent law, but that’s not saying much considering its just you 6.

    6: You’re a regular renaissance man!

    AI: Well, yes I am, as are most Actual Inventors.

    6: “Oh, and by the way, thoughts are in essence energy signals.”

    Which just so happen to not be subject to patent protection.

    AI: An application of a signal may very well be subject to patent protection.

    6: “So yes thoughts, especially at the quantum level, are related to neutrino particles as is every thing we “perceive” as mass.” :Really, and just how are they “related” to neutrino particles? Go ahead and explain, I need a physics lesson from your holiness.

    AI: Everything is energy.

    Class dismissed.

  114. I reiterate my finding that “abstract” and “preemption” are mere rhetorical labels of convenience that have proven to be more confusing than worthwhile, and also my suggestion that they should be removed from the patent lexicon.

    You want a clear analysis of abstractness and preemption? See my comment at 5:41 pm, as well as earlier ones for context:

    link to patentlyo.com

  115. Malcolm, what’s your first impression of a claim of this type from a 101 perspective:

    1) induce a signal into a system;

    2) measure the response to the signal;

    3) analyze the measured response to determine X, using novel formula Y.

    If you say, patent eligible, why would the result change if Y turned out to be old?

  116. Black, more propaganda? AI has been on a personal crusade against me. He is downright scary in his obsessions and obvious mental illness.

    Regarding citations, I have wasted my breadth numbers of times citing cases to AI as it never sticks. No matter how many times I do it, he says that I don’t do it. It is sheer lunacy, or something else that might be worse, trying to deal with this mentally unstable individual.

    If you inspect this thread, I almost alone cite and quote cases supporting what I say. To suggest that I do not is simply false.

    But, I suspect that you, Mr. Black, or either AI himself, or one of his sock puppet allies. You really don’t care to discuss issues. You simply want to bicker and perhaps more.

    I perhaps will regret writing this post as it always results in numbers of sock puppet posters who all sound like AI himself emerging from the forest to pounce on the post like wild dogs on fresh meat. There one will see goalpost moving, strawman erecting and shear unadulteratedly lying as would expect of obsessed stalkers.

  117. “I have a graduate degree in Neuroscience so if you want to discuss that topic go right ahead.”

    Yeah I know, just like you have a masters in physics, mathematics, bio, chem, and a JD as well as an MD. You’re a regular renaissance man!

    “Oh, and by the way, thoughts are in essence energy signals.”

    Which just so happen to not be subject to patent protection.

    “So yes thoughts, especially at the quantum level, are related to neutrino particles as is every thing we “perceive” as mass.”

    Really, and just how are they “related” to neutrino particles? Go ahead and explain, I need a physics lesson from your holiness.

    Is this your website?

    link to dedoimedo.com

    “And if you want to refute this then please do so with citations to those scientific experiments you have been reading and/or conducting.”

    Refute it? Extraordinary claims such as yours are what require evidence. Indeed, extraordinary evidence. I make no claims or refutations in re this topic, and I require no evidence to simply point out that your absurd assertions are absolutly baseless. That is, there is no evidence to establish that there is any “relationship” between thoughts and neutrinos. Why on earth you would believe something so absurd is a mystery, unless it is your base stu pidity at work again, or you are in fact insane. Or you were mixing specials.

    The special to which you were referring can be found here:

    link to pbs.org

    And guess what, surprise surprise, they’re talking about solar neutrinos, neutrinos that have nothing to do with your brain or your thoughts.

  118. MM, I wonder at Myriad hammering abstractness so hard in its brief, when the contention of Mayo is that the claims preempt a natural phenomena.

    These are not the same thing, are they?

    They are very similar but one needs to describe the situation accurately before understanding the similarities. When we talk about claims “preepting a natural phenomena” we certainly don’t mean that that the claims prevent the “natural phenomenon” from occurring. We mean that substantially all patentable uses of the “natural phenomenon” are covered by the claims. The easiest way to achieve that result is to do exactly what Prometheus did: recite generally (i.e., unpatentably) an old obvious step of obtaining data relating to the “natural phenomenon” and toss in a step of thinking about the data in light of the “natural phenomenon.”

    As for why Mayo chose their particular strategy, I think we already know why: their counsel stinks.

  119. Mental step = abstract.

    Why haven’t we ever seen the expose on why some mental steps are allowed in claims…?

    Not just “some mental steps” but you should feel free to recite ANY mental step in a claim that is otherwise patentable and patent eligible. I have absolutely no idea why you would want to do clutter up an otherwise perfectly good invention, of course, but I can think of no reason why you should not be able to do that if you wish to do it.

  120. Ned, is just a pseudo legal intellectual, at least when it comes to patent law. If he could cite the cases to back up his theoretical should be law, he would have done so by now. Alas he is just a paper dragon blowing hot air. Disposed of with a simple, “cite please?”

    Then POOF!

    He is gone.

  121. crelboyne, echoing MM, I wonder at Myriad hammering abstractness so hard in its brief, when the contention of Mayo is that the claims preempt a natural phenomena.

    These are not the same thing, are they?

  122. 6, it’s kinda of humorous to see you jump in here and argue you are smart/right because you think you watched a TV program I did not.

    Anyway, I am not combining specials.

    I did watch the PBS Neutrino special at the time the two scientist won the Nobel prize back in 2000.

    It was not a show about Neurons. I have a graduate degree in Neuroscience so if you want to discuss that topic go right ahead.

    Oh, and by the way, thoughts are in essence energy signals.

    So yes thoughts, especially at the quantum level, are related to neutrino particles as is every thing we “perceive” as mass.

    And if you want to refute this then please do so with citations to those scientific experiments you have been reading and/or conducting.

    Otherwise you will become just like Ned, a commenter known for making insults and having no citations, or credibility.

    Wait, too late you are that already .

  123. M. Webster:

    “Why haven’t we ever seen the expose on why some mental steps are allowed in claims…?”

    Check Diehr. There a process was deemed patentable when the only novel step involved the solving of a mathematical formula. The process was changed because of use of the mathematical formula. The formula used data measured from the molding process. The result of the calculation was used to open the mold.

    Here is element g from claim 11:

    “”(g) repetitively calculating at frequent periodic intervals throughout closure of said press the Arrhenius equation for reaction time of said rubber to determine total required cure time v as follows:
    “ln v=cz+x
    “wherein c is an activation energy constant determined for said rubber being molded and cured in said press, z is the temperature of said mold at the time of each calculation of said Arrhenius equation, and x is a constant which is a function of said predetermined geometry of said mold,”

    Using Diehr as a template, the boundary between and unpatentable mental step any patentable mental step becomes clear. If the mental step operates upon data from data-gathering steps and produces an output that is used to modify physically the process, it is patentable.

    This of course is the familiar MOT test in operation. As we know, the MOT is not the exclusive test. But if the claim passes the test, is patentable subject matter.

  124. ab·stract/abˈstrakt/

    Adjective:

    Existing in thought or as an idea but not having a physical or concrete existence.

    Mental step = abstract.

    Why haven’t we ever seen the expose on why some mental steps are allowed in claims…?

  125. in such a situation, strong precedent can actually inhibit development

    I can’t think of a single useful art whose “development” would be inhibited by this decision. Can you?

  126. Prometheus, of course, has less to do with “abstraction” as it is used in this case and more to do with the patenting of new information itself, via the recitation of the new information in a mental step.

  127. They got it from a Journal of the PTOS article that went through the whole thing step by step. It was published a year or two ago. I found it only mildly convincing.

    Main reason I found it barely convincing is that they try to construct a spectrum of abstractness by putting some abstract things on one side where they start adding in “real” things as they get “less abstract” until they then make a huge jump into things that are totally not abstract but are only abstractly being described. There is a difference between the subject matter being abstract and in the description thereof being abstract. You will see more explication on that point in upcoming cases. Mark my words. People are too confused on that point at present but it is easy to understand and courts will make it clear eventually.

  128. nit-picking my phrasing of an offhand valediction… Who does that?

    Me for one. Others should as well, as your sloppiness leads to your own confusion on other legal matters.

    If you want to offer “offhand valedictions,” you might want to use the term “valediction” properly, as the point of my “nit-picking” wasn’t the valediction, but rather, the tie-in of your (poor) choice of word in that valediction to the gist of the conversation.

    You are trying too hard to be too clever and failing miserably.

    Come back when you have this figured out, or at least can post in some semblance of nonconfusion.

  129. I was never confused.

    OK. But if you knew what I meant all along, then that means you were simply nit-picking my phrasing of an offhand valediction. Who does that?

  130. Really? Where, exactly?

    Here:
    Feb 27, 2012 at 05:35 PM
    Feb 28, 2012 at 09:32 AM
    Feb 28, 2012 at 09:57 AM

    and of course, here:
    Feb 28, 2012 at 11:15 AM

  131. I really liked Myriad’s “levels of abstraction” analogy in its SCOTUS amicus brief in the Prometheus case. Not a panacea, but well-reasoned and workable.

  132. With respect, your comment reveals the difficulty that even you have applying the idea of “abstract” to a brief blog post.

    Really? Where, exactly? Do you disagree that legal relationships are abstract? Do you disagree that a handshake and that shared DNA characteristics are not abstract?

    And once again, so-called “preemption” is based on “a lack of specific utility”, … so in a very real sense, the “abstract/non-abstract divide” you describe IS the “preemption analysis”…

    I’m afraid I don’t get that, either. Legal relationships and contracts certainly have very specific utilities, as they provide persons with very real remedies in the event that obligations established by those relationships and contracts are not met. But the legal relationships and the contracts are still abstract, so I don’t think “wholly preemptive” and “abstract” are coterminous.

  133. just think of how much more quickly we would have so many more Einsteins and so much more promotion of the arts.

    Right, with all those other clever scientists being motivated by Einstein’s threat of an injunction to design around special relativity.

    Do you think he could have gotten a court order for Mercury to cause its perihelion to precess classically during the life of his patent? Who has jurisdiction over that?

  134. I’m sorry that I confused you.

    You mean that you are sorry that you were sloppy. I was never confused. Don’t be confused about just who was confused. And please, apologize for what you mean.

    I don’t know what that means.

    Yes. That is apparent. Obviously, not only are you sloppy and do not have your terms on straight, you are confused in your attempted position taken in your several posts. Clearly then, the problem with your “I don’t think the term “abstract” is that difficult.” is your thinking.

    Come back when you have this figured out, or at least can post in some semblance of nonconfusion.

  135. Further, if you add the fuel of interest to the fire of genius, just think of how much more quickly we would have so many more Einsteins and so much more promotion of the arts. After all, Einstein had his genesis in a patent office.

  136. Brief response for everybody else’s benefit:

    My “feelings” had nothing to do with my comment.

    Paul, precisely what do you think is precedential about this opinion?

  137. Leopold–

    With respect, your comment reveals the difficulty that even you have applying the idea of “abstract” to a brief blog post.

    And once again, so-called “preemption” is based on “a lack of specific utility”, which has been one of the ways in which the term “abstract” has been used by the courts–so in a very real sense, the “abstract/non-abstract divide” you describe IS the “preemption analysis” from which you tried to differentiate it.

  138. Paul–Thank-you for the strong words, they are most welcome.

    My post was made sincerely. I honestly believe that there is nothing of substance in the opinion that can be considered to set a precedent that will bind future decisions.

    Let’s look at the opinion, shall we?

    The published opinion is 13 pages long.

    Page 1 recites simply administrative information.

    Pages 2-5 recite simply background information.

    Page 6 recites simply an overview of statutory and judicial sources.

    Pages 7-9 recite a repetition of the court’s survey of the leading USSC opinions.

    The only potential for anything precedential is in the last paragraph on page 9, and pages 10-13.

    The last paragraph on page 9 presents only an admittedly empty conclusory statement, and a condensation of the court’s construction of the claims.

    There is nothing in the first 9 pages that can be said to be of precedential value.

    This leaves only pages 10-13.

    Of the 2 paragraphs on page 10, the first merely summarizes the positions of the litigants, in their own language.

    Page 10, paragraph 2 describes the invention as “an abstract concept” without providing any reasoning for this conclusory statement. The decision that “mere connections to the physical world through deeds, contracts, and real property cannot transform an abstract concept into patentable subject matter” relies upon the unexamined, and hence unidentified, “abstract concept” in this particular case. As no actual basis for the decision in this paragraph is articulated, it cannot logically form a precedent for any other case presenting a different set of facts.

    Page 11, paragraph 1, is merely a recitation of the conclusory statement made in the preceding paragraph, aggregated with references to other opinions that the court considers in support of their decision in that paragraph; however, there is no analysis or synthesis performed by the court in this paragraph, and it therefore contains nothing of precedential value.

    Page 11, paragraph 2, is a merely an explicit adoption of the un-reasoning provided in the previous section, combined with a brief introduction to following paragraphs. Nothing precedential there.

    We are now down to only pages 12 and 13.

    Page 12, paragraph 1, recites simply the court’s overview of the CAFC opinions in Cybersource and Ultramercial; nothing of precedential value here.

    Page 12, paragraph 2, recites simply the court’s overview of the CAFC opinion in Dealertrack; nothing of precedential value here.

    We are now down to only page 13.

    Page 13, paragraph 2, repeats merely conclusory statements in an abbreviated form, and therefore contains nothing of precedential value.

    Page 13, paragraph 1, is merely conclusory, relying on the unexamined and unidentified “abstract concept” mentioned earlier in the opinion; not only that, but the court exacerbates the lack of precedential substance by again invoking such terms as “meaningful limits”, “significant part”, and “insignificant post-solution activity”, without at all explaining what they mean either generally or as applied to this set of facts in particular. Although the 4th sentence in this paragraph does define the phrase “using a computer”, that definition is limited to the specific facts of this case, as an agreed-upon claim construction.

    Unless I have missed or misconstrued something, I don’t find anything in this opinion that I could use to present to a future court with the suggestion that it should be binding upon that court or panel. The opinion is entirely hollow, vacuous, and insubstantial.

    It’s amusing that you suggested that my “feelings” were somehow “hurt” by the opinion!

    The informational content of my post was that I don’t find there to have been anything of precedential value in the opinion, and that in itself was what was “wrong” about the opinion, in your words.

    As far as the court attempting to apply or develop rules of law, there was no such development in this case that could bind future tribunals. The decision to apply certain rules can be precedential in itself, of course, but those precedents were set well before this case was decided; furthermore, if their application was unique to this case, they are so ill-defined as to be incapable of anything near the commonly-held understanding required for any meaningful “precedent” to be identified with some required minimum degree of precision.

    GIGO therefore appears to be the operative paradigm in this opinion. I’ll go even further, and suggest that the “precedential” opinions upon which this opinion purports to rely also contained little to nothing of worthwhile precedent, which is why all the statements made in this opinion are merely conclusory–because there WAS no particular rule of law articulated in those prior opinions that could be meaningfully applied to the particular set of facts in this case. There was no “application of precedent” in this opinion, merely a parroting of the same hollow and conclusory statements of position made in the earlier referenced decisions.

    This is why patent litigation, and the resolution of a 101 issue in particular, is a crapshoot–because there is actually very little of any meaningful precedential value.

    Briefs are written, and decisions are made, more on the basis of perceived social/cultural drifts, sentiment, and policy initiatives than on any strictly legal basis, and in such a situation, strong precedent can actually inhibit development. Unfortunately, although it may be somewhat easy to figure out in which direction the wind is currently blowing, weather changes quickly.

  139. In my opinion, absolutely. If a new toothbrush or mouse trap is worthy of a patent, e=mc^2 most certainly is. I don’t see any need for it to be tied to computer implementation either. A claim to a method for determining the energy equivalent of a mass of an object (or what ever e stands for) comprising determining the mass of the object and multiplying the determined mass by the speed of light squared should have been patentable at the time.

    It was the most profound discovery in the last and next 100 years. Why shouldnt have AE been entitled to a patent?

  140. Actually – that writing is abstract, as you are merely writing, in the abstract, of something else that you are attempting to capture.

    My apologies. I should have said “Now I’m off to write some claims directed to non-abstract subject matter.” I’m sorry that I confused you.

    I think we have made a whole system that decries this “only at the conceptual level” argument.

    I don’t know what that means.

  141. relationships themselves only exist at the conceptual level.

    I think we have made a whole system that decries this “only at the conceptual level” argument.

    Or perhaps you do not understand what it means to have something “only at the conceptual level.”

    Now I’m off to write some non-abstract claims…

    Actually – that writing is abstract, as you are merely writing, in the abstract, of something else that you are attempting to capture.

    You do not have your terms on straight.

  142. You’re throwing around the word “abstract” like you were a jurist.

    Fair enough, IBP. But despite the weeping and gnashing of teeth that goes on here, I don’t think the term “abstract” is that difficult. Sure, there will be some close calls, but that is what developing case law is for.

    For instance, I referred to “abstract relationships between people.” Maybe there are some close calls, but I don’t think legal relationships are anywhere close to the line – those are obviously abstract, as the relationships themselves only exist at the conceptual level. A handshake is an example of a non-abstract relationship between two people, as is shared familial DNA, I suppose.

    I struggle to see any more difficulty in applying “abstract” then you see in many areas of law. In fact, I think the “abstract”/”non-abstract” divide is a lot more clear than this “preemption” analysis that keeps popping up.

    Just my two cents. Now I’m off to write some non-abstract claims…

  143. The Abstractness of it all.. JUST THE FACTS LEAD IT TO THE TRUTH. AND THE LEMMINGS WILL FOLLOW…….YOU MAY HAVE RUINED MY LIFE. BUT PAYBACK IS A WONDERFUL THING, THAT’S WHAT THE COURTS ARE FOR!

  144. “An entire special was a on PBS award wining Nova series about 5 years ago.”

    From which AI gleaned the entirety of his knowledge of neutrinos. AI you need to go back and watch that program one more time brosensky.

    Also, AI, one does not “rebut” science, and even if one did you certainly do not do it with “citations”, you’d do it with experiments.

    Also, one other thing don’t combine PBS specials. The one special is on NEURONS which are involved with thoughts and the other is on NEUTRINOS which have nothing to do with thoughts. At all.

    And Ned, don’t confuse base AI’s base stu pidity for insanity.

  145. There is no information content in your posting beyond your hurt feelings.

    A malady affecting many more than just Inviting Body Punches, and one respecting neither side of the GD War of Consistent Monikers.

    If we were to follow your advice “yours is a posting that should not have been made,” these threads would be emptied by 90%. The vocal minority’s 60% and those engaged in was with them’s 30%. These numbers have an accuracy better than 92%.

  146. “The problem with the court’s jurisprudence here is that “unpatentably abstract” is not defined.”

    What do you expect with the “fuzzy” Bilski “we know an abstract idea when we see it” approach? The claimed investment tool here is eerily reminiscent of the claimed hedge process in Bilski. What would have been more surprising is if this claimed investment tool had survived the patent-eligibility challenge under 35 USC 101. Let’s face it, any claimed process or system involving financial accounting, financial investments, and the like are going to be “suspect” for patent-ineligibility under the “fuzzy” Bilski approach.

  147. Some of them are better at reading than others. Observe how disparate some opinions are from my own and the actual USSC lawl upon which all this is based.

  148. I think we need to beware what we ask. If we seek a bright line rule, there is a risk that the judges will site it in the wrong case to our lasting detriment. It may be better as here to accumulate experience of cases on one side or the other until either it is appropriate to establish the bright line or experience is sufficient for practitioners to know where they are. Sympathy for judges feeling their way in a difficult area and mindful of the maxim “do no harm” would not be misplaced.

  149. Imagine you were contemplating a petition to the Supremes in this case. You would not get far by merely stating that the opinion is vacuous, and while GIGO is an art-recognized term in the software field it has not been accepted into legal practice.

    There is no information content in your posting beyond your hurt feelings. As such, your friends on this blog are distressed when you are hurt, but are unable to help unless you can tell us what you think is wrong. And if you treat precedental opinions of the CAFC as vacuous rather than trying to figure out their implications and the rule of law that the court was applying or attempting to develop, your professional work is certain to suffer.

    Respectfully yours is a posting that should not have been made.

  150. Leopold, I agree. These claims are like Bilski redux, and I don’t think this case is at all the poster child for 101 outrage.

    Dealertrack, Ultramerical, and Cybersource had much more *interesting* claims.

  151. Be a gentleman for a change.

    After he gets done insulting AI and avoiding discussing things like a legal scholar with case cites.

    Really????

  152. you stop lecturing people about this or that. You are not a god even if you think you are.

    Pot, meet kettle

  153. “I will agree with you that if a claim wholly preempts the unpatentable, it is unpatentable. Wholly preempt does not however help define whether the claim is directed to something that is unpatentable as a matter of law.”

    So then you think that if it wholly preempts it is unpatentable … presumptively as a matter of lawl right? But then somehow the term “wholly preempt” does not help “define” whether the claim is directed to something that is unpatentable as a matter of lawl?

    /facepalm Ned.

    The only possible way that what you’re saying makes any sense, or dollars, is if you mean that the term “wholly preempt” does not help to “define” whether the claim is directed to SUBJECT MATTER that is unpatentable as a matter of lawl. If that is what you are trying to say then ok. Yes, obviously that is true. Other than that, it just looks like you’re a tard. I really don’t even know how to help you.

    In any event, the way you can tell what subject matter is unpatentable as a matter of lawl is by looking to the statute and the exceptions.

  154. Ned: “In the end, if a claim fails the MOT, it fails 101.”

    This is not true.

    Not true in Diehr

    Not true in Bilski

    Not true in CAFC Ultramercial and Research Corp.

    JUST NOT TRUE AT ALL!

  155. You guys are on a personal crusade. You openly admit it

    cf

    There is GD war between the two factions, and you know it.

    W

    T

    F

    Ned, you are at it again.

    QED yourself and your hypocritical messages.

  156. AI: “So, everyone concerned in Bilski, all judges and all justices, all of them, considered the Bilski claims to be directed to a business method. At some point in time, AI, you will just have to accept this simple fact.”

    Where is that commenter that is keeping track of your strawman post? Oh well we will add this to your count later.

    Show me any issued patent and I will show you the business method it is directed to.

    Go ahead…make may day.

  157. In the end, if a claim fails the MOT, it fails 101

    Even though ALL NINE JUSTICES said this was not to be the case in Bilski.

    So very sad.

  158. AI,

    “35 U.S.C. 101 Inventions patentable.

    Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” Notice the word “new.”

    AI: Ned, The word new in the statute at 101 does not mean the same as the use of the word new in 102. ( Don’t make me quote Diehr because I will open up a can on you). You w’ere wrong to ever imply such in ANY way in the first place. So just stop doing it.

    There is no point of novelty test at 101.

    There is no dam dissection allowed PERIOD.

    These are just two facts you must learn to accept.

    So deal with it.

  159. Ned: First of all, my post at Feb 27, 2012 at 05:58 PM was in reply to Fish Scales, not you. So for you to jump in with as a personal attack no less, with completely uncalled for and says something about your desperate desire for my attention.

    Second, I am your intellectual superior when it comes to business methods and 101 case law . Not because I say so. But because you have lost every debate we have had on this topic since BILSKI Vs. KAPPOS, and you continue to lose every time you post.

    This is what your colleagues say on this blog to you directly. And your response is to suddenly accuse them of all being me, even though you converse with them ( e.g.anon ) on many different topics and threads I don’t even comment on.

    For you to continue to rant and attack every time I make a post says more about you than it does me, or any commenter on this blog.

  160. Ned: Do we need any more proof of AI’s complete insanity?

    AI:Ned, the existence, behavior, speed and indeed mass of Neutrino particles is well established science. Nobel prizes have been awarded for the ground breaking research as early as 2000 IIRC. An entire special was a on PBS award wining Nova series about 5 years ago.

    If you want to rebut any of the science then please do so with citations.

    Because Just like in law, simply calling someone a name does not make you smarter or right.

  161. Anonymous “So if a scientist comes up with a new scientific theory that comes with a formula (e.g., something along the lines of e=mc^2 or f=ma), he should be able to get a patent that claims using a computer to carry out the formula?”

    Hmmm…well I am an Actual Inventor so I can answer from that perspective. So….

    “If an Actual Inventor comes up with a new business method/theory for curing rubber that comes with a formula (e.g., Using the Arrhenius equation –k=Ae -Ea/RT , which may be restated as ln(v)=CZ+x –, he should be able to get a patent whose claims include using a computer to carry out the formula”

  162. AI, I will agree that it was the dissents in Bilski, both at the Supreme Court and the two at the Federal Circuit, would have denied eligibility because the claims were directed to a business method. The Kennedy majority disagreed, not because the claims at issue were not directed to a business method, but because they did not believe that congress had categorically excluded business methods from eligibility.

    So, everyone concerned in Bilski, all judges and all justices, all of them, considered the Bilski claims to be directed to a business method. At some point in time, AI, you will just have to accept this simple fact.

  163. AI, if you read what I have posted, I point out that the courts are not relying on the MOT is so many words. Nevertheless, they are doing so in reality. They are simply masking their disregard of the Bilski majority by using magic words, such as “abstract” and “wholly preempt.”

  164. AI said,

    “MM, while the mere concept of real estate investment tools may be abstract, the physical acts of applying real estate investment tools are not abstract.

    “On a quantum level what is basically happening is the thought plus the act is accelerating neutrino particles close to the speed of light. As these particles speed up time slows down and mass is formed.

    So in actuality the process is as useful and real as the hammers, screwdrivers, wrenches, and shovels that you can drop on your foot.”

    Do we need any more proof of AI’s complete insanity?

  165. AI,

    “35 U.S.C. 101 Inventions patentable.

    Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”

    Notice the word “new.”

    However, what I advocate is that the courts stop comparing old and new elements as a part of 101 analysis. Novelty should have nothing to do with 101. That is my view. (I will note, that Rich also had this view.)

    In the recent oral argument at the SC involving Prometheus, Kennedy acknowledge that Bilsi might leave one with the impression that novelty was a component of its analysis when they noted that hedging was notoriously old. Why did they say that in the most crucial paragraph of its holding if it was unnecessary?

  166. AI, I will begin to treat you with some respect the day you stop lecturing people about this or that. You are not a god even if you think you are.

    If you have an opinion on something, say that it is your opinion. If you disagree with someone, say that you disagree. Be a gentleman for a change.

  167. IBP, well the real problem is the lack of a bright line rule.  The Supreme consistently endorse the MOT, but refuse to agree that it is the exclusive test.  

    Let us just say this:  If a claim fails the MOT, the claim for all practical purposes is finished.  In reality, the burden shifts to the applicant/patentee to justify the claim if he or she can.  The court merely camouflages its use of the MOT by careful use of magical words, such as "abstract" and "wholly preempt."  These words are in reality like the magician's puff of obscuring smoke behind which the magician/judge performs the real "magic."  So long as one understands the "wink" "wink" going on here, there should be no problems in coming to the right result when one is considering the validity of a claim for an opinion or otherwise.

  168. Anonymous has replied to your comment:"I have argued elsewhere that Congress's intent shouldn't matter because they clearly are not intelligent enough to know what's in the bills that they pass."

    Is that what Scalia actually meant?

  169. I, too, highlighted that passage in the opinion…except my brief note about it read: “merely conclusory”

    I still believe the ongoing CAFC precedent to be the writing of inadequate opinions in patent cases.

  170. Ned, interesting that you never challenge me to cite case law, like I do you. Heck even on this post you could have challenged me to post the list so the discussion could have progress on the facts. Instead you launch into preemptive personal attacks. Hmmmm… I wonder why?

  171. Ned:”At a minimum, it appears that the views of Mayer, Dyk, Linn, Stevens, Ginsberg, Breyer and Sotomayor are prevailing regardless that they were ALL in dissent in Bilski.”

    Talk about a reality distortion field!

    As it stands now Diehr is controlling case law and the minority in Bilski has not become the majority in any Supreme Court case.

    Until that changes any “Actual Inventor” with will and the guts to go to the Supreme Court will certainly prevail, if not before.

  172. 6, I think we are in agreement.  But I am not sure.  I will agree with you that if a claim wholly preempts the unpatentable, it is unpatentable.  Wholly preempt does not however help define whether the claim is directed to something that is unpatentable as a matter of law.

    I think that is the point of Dennis' post as well.

  173. “You bicker for the sake of bickering and absolutely refuse to engage is serious intellectual discussion.”

    Ha! This from the person that makes Bart Simpson type insults when asked for legal citations!

  174. There is no war. Minority opinions and occasional wrong decisions by judges on lower courts does not change the law as set by the majority on the Supreme Court. Only a fundamentalist would characterize such actions as a war.

  175. So if a scientist comes up with a new scientific theory that comes with a formula (e.g., something along the lines of e=mc^2 or f=ma), he should be able to get a patent that claims using a computer to carry out the formula?

  176. Ned: “As per Benson, physicality (in the result?) is the clue to patent eligibility.”

    AI: “The clue” is NOT “the answer”. And a clue is NOT a test. And if you insist that it is please answer the question you have long ducked:

    How does one pass a clue?

    ::The silence contunues::

  177. 1. Benson has been cabined by Diehr.

    2. Anyone that cites Malcolm for anything but being a troll can’t be taken seriously.

  178. Ned: “Ditto novelty, another requirement of 101”

    AI: Once again, cite please?

    ::once again, no cite::

  179. AI to this day will not acknowledge that the claims in Bilski were directed to a method of doing business per se and not to any technology that was useful in implementing a business method. Any and all effort to get him to concede this simple point ends in major goalpost moving, strawman production, and personal assaults by AI and his fellow sock puppets, which might be AI himself in various sock puppet guises.

    I can see it beginning once again.

  180. Ned in the time you took to post an insult you could have cited case law to refute my post.

    The fact that you didn’t or couldn’t speaks volumes.

  181. Actual Inventor, I might ask you to give us notice once you graduate from the 3rd grade. You clearly have not learned how to read and understand the English language.

    If you haven’t noticed yet, I have called for the courts to stop addressing novelty issues as a part of patentable subject matter analysis and to confine issues of novelty to analysis under section 102/103/112. I have been doing so consistently since the government brief filed in the Supreme Court in the Prometheus case.

    But as always. You do not deal in what I say. You deal in what you think I say. The two are not the same thing, at all; which illustrates your problem with reading comprehension.

  182. MM: There were no “falsehoods” in my “argument”, Lester.

    AI: I am a bit confused as to what you said MM. Is the following your quote?

    “Indeed, “real estate investment tools” are abstractions. They don’t exist in the physical world like other “tools” that we are all familiar with, e.g., hammers, screwdrivers, wrenches, shovels, etc. “Obligations” aren’t articles of manufacture or compositions. Methods for creating “obligations” between parties do not merit patent protection because there is no “progress” in the useful arts that is being promoted. Issuing patents on such methods only blocks the ability of others to freely engage in legal transactions.”

    If the above is your quote you are wrong on so many levels here. Let’s start with just the first sentence.

    “”Indeed, “real estate investment tools” are abstractions. They don’t exist in the physical world like other “tools” that we are all familiar with, e.g., hammers, screwdrivers, wrenches, shovels, etc. ”

    MM, while the mere concept of real estate investment tools may be abstract, the physical acts of applying real estate investment tools are not abstract.

    When the concept is reduced to practice in a series of objectively measurable steps, that produce the same result, we now have an application of a concept.

    On a quantum level what is basically happening is the thought plus the act is accelerating neutrino particles close to the speed of light. As these particles speed up time slows down and mass is formed.

    So in actuality the process is as useful and real as the hammers, screwdrivers, wrenches, and shovels that you can drop on your foot.

    While it may be true that in the 1800’s the only thing that was considered real was what you could hold in your hand, that mind set was shattered and changed after 1925 by modern physics.

    Only someone living in the dark ages or willfully ignorant would advocate freezing the progress of the “Useful Arts” to inventions and knowledge of the iron age.

  183. Lester: No one knows what you think until you act on those thoughts

    False. Try to keep up with the science, Lester.

    I see know harm in allowing methods that read on mental steps to be patented.

    Of course you don’t, Lester. That’s because you’re the ultimate patent txxbagger.

    you can’t be sued for merely thinking

    But of course nobody who thinks is “merely thinking”, Les. We’re all transforming matter, all the time, before, during and after we think. Are you suggesting that we can’t be sued for merely transforming matter and thinking about it? Where is that in the statute, Lester?

  184. Les, you might be right there. I suggested elsewhere that the Feds have come down hard on BMPs, but have been somewhat more favorable to technology-relatied inventions. Manipulation of data in some transformative fashion may not strictly pass the MOT, but nevertheless it may be patentable.

    Someone once pointed to claim 5 of Morse’s patent. It was approved by the Supreme Court. It read,

    “Fifth. I claim as my invention the system of signs, consisting of dots and spaces, and of dots, spaces, and horizontal lines, for numerals, letters, words, or sentences, substantially as herein set forth and illustrated, for telegraphic purposes.”

  185. Ned, show with proper citation where the Court agrees that you can import novelty into 101.

    :: Ned Silenced By The Call For Citations::

    As usual.

  186. As long as you take the claims as a whole there is no problem. And no getting around the Diehr doctrine, at the SCOTUS level.

  187. MM: What’s important to know and ALWAYS remember is that the Court made a judicial exception to “purely” mental processes. A physical application of a concept is no longer a mental process and is therefore patentable subject matter under 101, 102, and 103.

    Until thats changed it’s still the law.

  188. The Q, I have my own views on this, but I think the Fed. Cir. continues to apply the MOT, just as did the SC in Bilski, without ever agreeing that they are applying the MOT.

    In the end, if a claim fails the MOT, it fails 101. But the courts have to use the magic words of Benson and Bilski, it has to use the magic word “abstract” almost as if it were a required incantation similar to the use of obscure Latin phrases that somehow causes a frothing brew to assume a new form and shape (my apologies in advance to Catholics who actually believe this this to be true in connection with transforming a host and some wine into the body and blood of Christ.)

  189. How many people make their own personal spread sheets.
    How many people use it in the same sense as a Ledger.
    Wouldn’t that Software they speak of be in the same sense a Ledger that can be done on paper?

  190. AI Correction: If indeed this is what this particular panel of the CAFC did or upheld then it’s quite illegal and will be overturned on appeal to the Supreme Court of the United States.

    Just like Bilksi.

    BWHAHAHHAHAHAHAHAHAHAHAHHAHAHAAHHAHA!!!!!!!!!!!!!

  191. identifying just a few of the falsehoods in your argument

    There were no “falsehoods” in my “argument”, Lester.

  192. No Ned, you may not.

    There is no requirement in MOT that physical things be manipulated. Only that articles be transformed. Articles include things. A thing is: “a matter of concern…2b: a product of work or activity…3a: whatever exists or is conceived to exist as a separate entity or as a distinct and individual quality, fact, or idea…”

    A bit of data can be a product of work or activity and is conceived to exist distinct from other bits.

    Therefore, a transformation of data meets the transformation leg of the MOT.

    As for mental steps, I don’t see that prohibition in the statute and I see know harm in allowing methods that read on mental steps to be patented. No one knows what you think until you act on those thoughts, so you can’t be sued for merely thinking.

  193. Correction: If indeed this is what this particular panel of the CAFC did or upheld then it’s quite illegal and will be overturned on appeal to the Supreme Court of the United States.

  194. “The problem with the court’s jurisprudence here is that “unpatentably abstract” is not defined. Rather, the court simply recited the core function of the invention and the conclusion that it is abstract.”

    I have not read the case the panel is discussing. But I do agree that merely reciting the concept of an invention, then declaring it abstract without looking at the application is a problem.

    If indeed this is what this particular panel of the CAFC did or upheld then it’s quite illegal and will be overtuned on appeal to the Supreme Court of the United States.

  195. Yes, but I was addressing your assertion:

    “The CAFC’s explanation for finding the claim ineligible under 101 seems perfectly straightforward:”

    regarding:

    “American Master Lease (AML) owns a patent that covers a method of creating a tax-deferred real estate investment instrument. U.S. Patent No. 6,292,788.”

    By identifying just a few of the falsehoods in your argument.

    Didn’t you recognize your own falsehoods? Didn’t you remember the context of your own falsehoods?

  196. What point?

    The Courts already take the claim as a whole at 102 and 103.

    At 102 if every step in the claim is performed in the exact order, in a single prior art reference then it is not new/novel.

    There is no dissection allowed period.

    The legal important to remember here is that at 102 the novelty is in the new use which can be a process by itself, and not limited to a process tied to a machine.

    Now that’s the law according to the statute, and the Supreme Court.

    Anyone saying anything different is merely talking about their own philosophy of what the law should be and not what the law actually is.

    This point can’t be stressed enough, especially on this blog.

  197. Leopold–

    The only thing that was made clear in Bilski was that nothing is clear.

    You’re throwing around the word “abstract” like you were a jurist.

    I will absolutely agree, however, that this opinion was a no-brainer!

  198. “Fort Proper-ties counters that under Bilski, 130 S.Ct. at 3218, the invention’s intertwinement with deeds, contracts, and real property does not transform the abstract method into a patentable process.”

    Why not?

  199. Wow. I would have thought that this opinion/result was a no-brainer. I thought that the Supreme Court in Bilski made it pretty clear that you can’t patent a process that does nothing more than define abstract relationships between people. But judging from the comments here, it wasn’t clear at all. How about that…

    (And no, an obligation is not an article of manufacture – a contract is not the obligation, but a description of the obligation, just as a deed is not the property or the ownership of the property.)

  200. “So you say.”

    Actually the statute says so.

    “…but there needs to be an actual advance to the computer arts…”

    No. There does not.

  201. Paul, by it terms, the new statute regarding tax avoidance inventions applies only to applications pending or patents issuing after the effective date of the AIA.

  202. Paul, you got it, and of course, I fully agree.

    At a minimum, it appears that the views of Mayer, Dyk, Linn, Stevens, Ginsberg, Breyer and Sotomayor are prevailing regardless that they were ALL in dissent in Bilski.

    It remains to be seen whether the courts will authorize or exclude claims to technology regardless of whether they pass the MOT. I think that Rader’s opinion in Ultramercial may indicate that the jury is still out on that one.

  203. Well, I have now read the opinion.

    The opinion is vacuous.

    Really, what else can be expected from the CAFC? Unfortunately, nothing.

    What I especially appreciate is the fact that the opinion is marked “precedential”.

    And what, precisely, is the precedent that the CAFC considers to have been set in this opinion? GIGO?

  204. I take Dennis’s post to say that it’s more than just “the precise location of the dividing line” that’s unsettled.

    Courts are supposed to decide cases based on articulable principles. They don’t have to specify the line, or resolve every hypothetical case not before them, but if you agree with Dennis that “the court simply recited the core function of the invention and the conclusion that it is abstract,” then the panel fell short here. They don’t have to write an opinion at all, of course, but when they do, they should explain how they reached their conclusions.

    That said, this part of the law is not the Federal Circuit’s fault. The en banc court in Bilski tried to derive an actual rule from the Supreme Court’s precedents, came up with the machine-or-transformation test, and the Supreme Court rejected it and replaced it with the current confusion. Dennis says this: I believe that all three of us see the current jurisprudence on abstract ideas as problematic. It leaves the courts and patent examiners without any real standards for determining an outcome other than asking whether the particularly claimed invention is “too much like Bilski, Benson, or Flook?”

    This is more or less what the Supreme Court told lower courts to do in Bilski, where its reasoning was essentially is the claimed invention “too much like Benson or Flook,” or is it enough like Diehr? The Supreme Court said this: “Rather than adopting categorical rules that might have wide-ranging and unforeseen impacts, the Court resolves this cas enarrowly on the basis of this Court’s decisions in Benson, Flook, and Diehr, which show that petitioners’ claims are not patentable processes because they are attempts to patent abstract ideas.”

    The courts are still struggling with this, and I don’t know of a clear answer. Maybe the best idea is to do what I think CJ Rader suggested, and avoid 101 issues wherever possible.

  205. I have argued elsewhere that Congress’s intent shouldn’t matter because they clearly are not intelligent enough to know what’s in the bills that they pass.

  206. “Whether it was, or was not, an “advance in computer technology” is not a 101 issue.”

    So you say. But then on the other hand we have courts rattling it off like it means something. Specifically they’re stating that as long as your claim involves advances in computer technology then you pass 101. Which, I hasten to add, I agree with, but there needs to be an actual advance to the computer arts, not the, as MM would say, “computer implemented garb age” arts. If you just made a new computer then sure thing, stand up and get a new patent. If you’re just reprogramming the one on your desk, take a seat Einstein. And if the court has to invent your “intricate and complex interface” for you I believe you should also be taking a seat rather than standing up.

  207. How did the claims here avoid the law which has already been in effect since the AIA was enacted?
    “Public Law 112-29 Sec. 14
    (a) In General- For purposes of evaluating an invention under section 102 or 103 of title 35 .. any strategy for reducing, avoiding, or deferring tax liability, whether known or unknown at the time of the invention or application for patent, shall be deemed insufficient to differentiate a claimed invention from the prior art.
    (b) Definition- For purposes of this section, the term ‘tax liability’ refers to any liability for a tax under any Federal, State, or local law, or the law of any foreign jurisdiction, including any statute, rule, regulation, or ordinance that levies, imposes, or assesses such tax liability.
    (c) Exclusions- This section does not apply to that part of an invention that–
    (1) is a method, apparatus, technology, computer program product, or system, that is used solely for preparing a tax or information return or other tax filing, including one that records, transmits, transfers, or organizes data related to such filing; or
    (2) is a method, apparatus, technology, computer program product, or system used solely for financial management, to the extent that it is severable from any tax strategy or does not limit the use of any tax strategy by any taxpayer or tax advisor.”

  208. AAA JJ, 101 has a number of requirements but no conditions. It should suffice if the claims nominally cover a machine, process, artcle or compostion, nominally are new, and nominally are useful.

    Whether the claims are directed to something useful can be tested under 112, p. 1, which under 282 is an expressed condition for validity, while 101 is not.

    Ditto novelty, another requirement of 101, but an expressed condition for patentability and validity under 102/103.

    IMHO, we should stop addressing in 101 issues that can be addresses, and perhaps more simply, but that is not the point, under 102, etc.

  209. “abstract”
    “pre-empt”
    “insignificant post-solution activity”

    Get real. What a bunch of bunk.

    If you took 10 CAFC or USSC justices, isolated them in individual rooms, and asked them the exact same questions regarding the fundamental principles and tests of patent law, you would get substantively widely disparate answers.

  210. Caveat: I have not read the opinion.

    Dennis: “The problem with the court’s jurisprudence here is that “unpatentably abstract” is not defined.”

    IBP: The solution as I presented it is recorded on the following patently-o thread: link to patentlyo.com

    Expose on anticipation, obviousness, inherency, and genus/species coming soon, for all of you to shred, on the “Whither Obviousness” thread here: link to patentlyo.com

  211. The ratio decidendi, so far as I can see, is that the claimed subject matter is insufficiently tied to the physical world, as in Bilski. It seems that the test is a matter of degree where it is impossible to define precise boundaries.

    It was pointed out in Bilski that commodities and money were insufficient ties to the physical world, and the same was held to be true in the present case for deeds, contracts and real property.

    If we look at the recent cases, however, there are instances demonstrating a common pattern:

    Bilski – risk hedging
    Cominski – mandatory arbitration resolution
    Schrader – bidding at an auction
    Dealertrack – applying for credit

    It appears that if the claimed subject matter is entirely in the field of business administration, then the claim is likely to be held unpatentable. At the risk of provoking the more excitable amongst the contributors to this blog, the position in Europe is the same, and it appears from current US jurisprudence that our prohibition is not wholly irrational.

  212. Whether it was, or was not, an “advance in computer technology” is not a 101 issue. There is no requirement in 101 that an invention be an “advance,” only that it be useful.

  213. 6, It is clear to me that the rest of the court continues to apply the MOT, but that Rader and Newman, at least, are adamantly opposed to the MOT.

    The silent war will continue Rader until really screws up and finds something patentable that would not pass the MOT.

  214. I must have missed the part in the Ultramercial claim that involved an “advance in computer technology” because it looked to me like they were just trying to patent the use of the watching of an advertisement to pay for some DRMed content. How that is an “advance in computer technology”

    “Any time a computer does something that isn’t exactly the same as something that was done in the past, that is an advance in computer technology.”

    /patent txxbxgger off

  215. Case in point about what you sockpuppets are all about: Read your moniker here. You guys are on a personal crusade. You openly admit it. You bicker for the sake of bickering and absolutely refuse to engage is serious intellectual discussion.

    QED

  216. See, the Benson quote above. link to patentlyo.com

    Next see Malcolm post at
    link to patentlyo.com

    In practice, it appears that when the claim as whole manipulates abstract intellectual concepts it is abstract. If it instead manipulates physical things (as in the MOT) to cause a new physical result, it is not abstract.

    As per Benson, physicality (in the result?) is the clue to patent eligibility.

  217. (Yet) another 101 thread to rescue Ned from the debacle he put himself into on the B-Claim thread, which in turn was to rescue him from the debacle on the 3 questions Anon thread.

  218. “while the Ultramercial claims required “an extensive computer interface.””

    Right, an interface that Rader invented himself, after the fact.

  219. Oh man, from the decision, in characterizing Ultramercial:

    “The addition of the computer to the claims was not merely insignificant post-solution activity; rather, the invention itself involved “advances in computer technol-ogy,” and it was thus sufficient to qualify the claims for patent eligibility under § 101. Id. at 1329.”

    I must have missed the part in the Ultramercial claim that involved an “advance in computer technology” because it looked to me like they were just trying to patent the use of the watching of an advertisement to pay for some DRMed content. How that is an “advance in computer technology” is quite beyond me. Maybe the people over in the “computer technology” field could weigh in, the guys over at Seimens, HP, and the sort would not be able to recognize what the “advance in computer technology” was. They’d just be like, “o, so you decided to offer them access to your DRM content in exchange for viewing an ad? Wonderful, but where is the “computer technology” you’re advancing?”

  220. Less I said a method of generating documents might be patentable, if its new and not obvious.

    No, you didn’t. Nice try, though. Like I said, Lester: you are a dissembler and perhaps the least honest patent txxbxgger to post here, ever, and that’s saying something.

    Here’s what you did say:

    “Obligations” are articles of manufacture.

    Not necessarily. And since when do ineligible abstractions like “obligations” become patent eligible merely by recording them on an old but patent eligigle medium? Or are you saying that only some “articles of manufacture” are patent eligible? Is that what you are saying, Les? Which ones are patent eligible, and which aren’t, Les?

  221. Dennis, can you post the transcript of the discussion please.

    “At a conference this weekend, Chief Judge Rader, USPTO Solicitor Chen, and I held an interesting discussion on drawing that line.”

  222. ” Flook seems to suggest that “wholly preempt” is not a requirement.”

    Correct. That is what the Flook decision gets to later on after the quotes you just told us about for the one millionth time.

    “I agree with you that if the claim is to subject matter not eligible for patenting as a matter of law (laws of nature, things of nature, and mental processes and abstract intellectual concepts), then limiting the claim to a particular use does not affect result.”

    Good. Now stop trying to misconstrue FN 11 into something which it most certainly is not. Things which FN 11 most certainly are not:

    1. Anything other than a restatement of what I wrote in the comment above.

    And FFS stop citing it unless you’re only wanting to show what I just stated in the previous comment above.

    “But Flook does affect the “wholly preempt” aspect of Benson because, per Flook, wholly prempt is not really a requirement.”

    No kidding? It isn’t a requirement to kill a claim, but it is deadly in and of itself.

    “”Wholly prempt” has nothing to do with eligibility.”

    Incorrect. The wholly preempt situation is the worst situation you could find yourself in. Not wholly preempting but finding yourself in the situation Flook worked himself into by using field of use limitations is the next worse situation. Both situations are deadly and the former is much easier to spot than the later usually.

    Make no mistake, the claim in Benson did LITERALLY wholly preempt whereas the claim in Flook did not. Do not mistake what is said in Flook for a statement that this is not the case. Which is what you are doing, so stop it.

    That’s all I’m going to say on this matter for you Ned, I’ve been over it and over it and you always fall back into your old interpretations even as you appear to to grasp the correct interpretations just the month or so before.

  223. Les, may I suggest that it is truly immaterial whether the contracts, or pens, or paper, or telephones, or internet, or computers used to carry out the transaction are physical. The real question is whether the claimed subject manipulates abstract concepts, which are mental steps (that can be perform mentally or by machines), or whether it manipulates (as in the MOT) physical things.

    Regardless of how the court tries to hide the pea in its 101 shell game, it continues to use the MOT.

  224. MM, one can effectively deal with claims to mental processes under 102

    And 103. The analysis is pretty much the same either way so who gives a shxt?

  225. MM: So you would be fine with patents to purely mental processes, sockie?

    AAA JJ said in reply to MM: Sure.

    A shocking moment of candor. But it’s great to know where you stand, sockie, even if you are so far out in left field that even the mosquitoes aren’t stxpxd enough to go there.

  226. “Documents are now eligible for patent protection!!!!”

    I didn’t say that. I said a method of generating documents might be patentable, if its new and not obvious.

    Also, your childish name calling does not really refute what I said.

  227. Less Of course these “Obligations” are articles of manufacture. They are legal documents. They certainly don’t occur in nature..

    LOL. The King of Patent Txxbxggers has spoken! Documents are now eligible for patent protection!!!!

    the art of real estate financing

    ROTFLMAO. Beyond parody.

    This is one falsehood after another.

    Says the master dissembler who never met a patent that he didn’t want to fluff.

  228. 6, Flook seems to suggest that “wholly preempt” is not a requirement. I agree with you that if the claim is to subject matter not eligible for patenting as a matter of law (laws of nature, things of nature, and mental processes and abstract intellectual concepts), then limiting the claim to a particular use does not affect result. But Flook does affect the “wholly preempt” aspect of Benson because, per Flook, wholly prempt is not really a requirement. Limiting the claim to this use or that use does not change the result. “Wholly prempt” has nothing to do with eligibility.

  229. “Indeed, “real estate investment tools” are abstractions. They don’t exist in the physical world like other “tools” that we are all familiar with, e.g., hammers, screwdrivers, wrenches, shovels, etc. “Obligations” aren’t articles of manufacture or compositions. Methods for creating “obligations” between parties do not merit patent protection because there is no “progress” in the useful arts that is being promoted. Issuing patents on such methods only blocks the ability of others to freely engage in legal transactions.”

    This is one falsehood after another.

    Of course these “Obligations” are articles of manufacture. They are legal documents. They certainly don’t occur in nature. Such a patent would promote advancement in the art of real estate financing in the same way a patent for a method of making an antibiotic promotes the advancement of the art of drug manufacture (while at the same time blocking others, for a limited time, from making the drug).

  230. Les, agreed. These requirement long predated the ’52 Act and there is nothing said about them in the ’52 Act. But, as I suggested elsewhere, congress may have specifically intended to remove patentable subject matter from validity by not including it as a listed condition for invalidity. Why they would have done that, unless it was a flagrant mistake, without intending to remove patentable subject matter from consideration by the courts, is something worthy of consideration.

  231. The rule against claims which pre-empt or provide protection to mental processes is a very clear test, as I’ve outlined here dozens of time. At the same time, it’s a narrow test that doesn’t readily capture and snuff all of the irredeemable horseshxt that’s out there.

    Case in point:

    American Master Lease (AML) owns a patent that covers a method of creating a tax-deferred real estate investment instrument. U.S. Patent No. 6,292,788.

    The CAFC’s explanation for finding the claim ineligible under 101 seems perfectly straightforward:

    Specifically, like the invention in Bilski, claims 1-31 of the ‘788 patent disclose an investment tool, particularly a real estate investment tool designed to enable tax-free exchanges of property. This is an abstract concept.

    Indeed, “real estate investment tools” are abstractions. They don’t exist in the physical world like other “tools” that we are all familiar with, e.g., hammers, screwdrivers, wrenches, shovels, etc. “Obligations” aren’t articles of manufacture or compositions. Methods for creating “obligations” between parties do not merit patent protection because there is no “progress” in the useful arts that is being promoted. Issuing patents on such methods only blocks the ability of others to freely engage in legal transactions.

    Under Bilski, this abstract concept cannot be transformed into patentable subject matter merely because of connections to the physical world through deeds, contracts, and real property. . . .

    And the Dierhbots can continue to sxxk on it. LOL.

  232. Lulz. Nobody is going to copy your “works” as they are gibberish that no judge or attorney would put into anything that would actually be part of a public record. And even if they did, you wouldn’t do anything about it. Now get back to your counts.

  233. Les, you make an excellent point! It would be far simpler for the courts to say that a claim nominally directed to a new use of an old machine defines patentable subject matter BY STATUTE.

    Then, move on to whether the use is “new” (or non obvious, etc.) under the clause laying out the “Conditions” for patentability (and validity).

  234. A passage that Ned still doesn’t correctly understand.

    For the 1 millionth time Ned, Footnote 11 was the court telling the patentee that his argument was UNPERSUASIVE because limiting a process claim to a specific end use which happens to be the only specific end use of the judicially except matter in the case is just as bad as a situation where they didn’t recite the one specific end use and simply claimed the whole judicial exception.

    It is a very simple concept. You may not have a patent on a judicial exception regardless of whether you recite the sole use of the judicial exception in the claim because you’re still patenting every single use of the judicial exception since there is only one.

    How Ned can still not understand this simple passage is beyond me. Especially after I’ve explained it to him 100000x and after he has presumptively read the passage more than 2x. Apparently believing that the author of one opinion would come a few years later and note that his own reasoning made 0 sense to him without going out of his way to explicitly call himself a tard makes Ned feel all warm and happy inside.

  235. “The mathematical procedures can be carried out in existing computers long in use, no new machinery being necessary”

    So what?

    35 U.S.C. 100 Definitions.

    When used in this title unless the context otherwise indicates –

    (a) The term “invention” means invention or discovery.

    (b) The term “process” means process, art, or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.

  236. Dennis, we have a clue when the court said it agreed with Fort when it said,

    “Fort Properties disagrees, arguing that the claimed method of aggregating property, making it subject to an agreement, and then issuing ownership interests to multiple parties consists entirely of mental processes and abstract intellectual concepts. Fort Proper-ties counters that under Bilski, 130 S.Ct. at 3218, the invention’s intertwinement with deeds, contracts, and real property does not transform the abstract method into a patentable process.

    We agree with Fort Properties.”

    “Mental Processes”

    “Abstract Intellectual Concepts”

    Cf. Benson:

    “The conversion of BCD numerals to pure binary numerals can be done mentally through use of the foregoing table. The method sought to be patented varies the ordinary arithmetic steps a human would use by changing the order of the steps, changing the symbolism for writing the multiplier used in some steps, and by taking subtotals after each successive operation. The mathematical procedures can be carried out in existing computers long in use, no new machinery being necessary. And, as noted, they can also be performed without a computer.

    “…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.” (Emphasis supplied.)

  237. Les, statute?

    The requirements of statutory subject matter looooooong predate the ’52 act. There is nothing in the ’52 act that clearly indicated* that Congress intended to overrule this jurisprudence except to the extent that certain subject matter was actually defined in Section 100.

    [*I have argued elsewhere that Congress did intend to overrule any patentable subject matter inquiriy when it EXCLUDED 101 from invalidity in new Section 282, which expressly, by terms, applies to only 102/103/112 and 251.]

  238. Everyone, I think they have. Even Flook commented that Benson’s preemption test made no sense. See, Flook at note 11.

    “Respondent correctly points out that this language does not apply to his claims. He does not seek to “wholly pre-empt the mathematical formula,” since there are uses of his formula outside the petrochemical and oil refining industries that remain in the public domain. And he argues that the presence of specific “post-solution” activity – the adjustment of the alarm limit to the figure computed according to the formula – distinguishes this case from Benson and makes his process patentable. We cannot agree.

    “The notion that post-solution activity, no matter how conventional or obvious in itself, can transform an unpatentable principle into a patentable process exalts form over substance. A competent draftsman could attach some form of post-solution activity to almost any mathematical formula; the Pythagorean Theorem would not have been patentable, or partially patentable, because a patent application contained a final step indicating that the formula, when solved, could be usefully applied to existing surveying techniques.11 The concept of patentable subject matter under § 101 is not “like a nose of wax which may be turned and twisted in any direction * * *.” White v. Dunbar, 119 U.S. 47, 51.

    Note 11.

    “It should be noted that in Benson there was a specific end use contemplated for the algorithm – utilization of the algorithm in computer programming. See Application of Chatfield, 545 F.2d 152, 161, 191 USPQ 730, 738 (CCPA 1976) (Rich, J., dissenting). Of course, as the Court pointed out, the formula had no other practical application; but it is not entirely clear why a process claim is any more or less patentable because the specific end use contemplated is the only one for which the algorithm has any practical application.”

  239. why hasn’t anyone mentioned this little problem before?

    People have. You were not paying atention.

  240. “When viewing the claimed invention as a whole, the physical activities involving the deeds, contracts, and real property are insufficient to render these claims patentable. ”

    When did physical activities become a requirement?

    STOP THE JUDICIAL ACTIVISM! READ THE STATUTE!

  241. “preemption” is largely unhelpful because it falls into the same line drawing trap: A patent is only useful if it sufficiently preempts (i.e., excludes) others, but at some point too much preemption renders a claim unpatentably preemptive.

    I’ve been hearing a lot of this recently, that “preemption” is inherently what all claims do, so it’s a useless quality for defining subject matter eligibility. “Preemption” has been around since Benson; why hasn’t anyone mentioned this little problem before?

  242. untangible = you cannot touch it? take a picture of it?

    Trolls will say you can take pictures of “information”, in fact it is just the carrier.

  243. “It leaves the courts and patent examiners without any real standards for determining an outcome other than asking whether the particularly claimed invention is “too much like Bilski, Benson, or Flook?” ”

    Which is why the “current jurisprudence” and the jurisprudence to follow should continue to copy, lock, stock and barrel, my own writings on the matter. And they should be sure to stay far away from the Rader/Research Corp position of “manifestly abstract” when such things have no basis in the law nor are even close to what the law is talking about. And they should not also forget that the USSC invited them to tighten up restrictions on patent eligible subject matter, not loosen them.

    The Courts have my permission to copy my works.

    That said, authors who then write about the court’s opinions that copy my works are however excluded under any applicable copyright. And I will go after them with the full force of their own lawls unless they provide a proper attribution. Even with a proper attribution I’ll probably come after them half way. Because I’m generous if they are.

  244. The role of the courts, as we know, is to decide cases that come before them and not hypotheticals. Even though the precise location of the dividing line may not have been completely settled, the existence of such a line is established and this subject matter is clearly on the wrong side of it.

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