BPAI On Statutory Subject Matter

By Dennis Crouch

Two cases where the Board found statutory subject matter:

Ex Parte Hu, App. No. 2010-000151 (BPAI 2012). The examiner rejected claims under Section 101. On appeal, the BPAI held that the claimed “computer-readable storage medium” is “directed to a tangible storage medium, which can be read by a computer” and therefore fall “within one of the four statutory classes of 35 U.S.C. § 101″ and qualify as patentable subject matter. The Board distinguished from a broader claim of a “computer readable medium” that would not qualify as tangible.

Ex Parte Svendsen, App. No. 2011-012505 (BPAI 2012). The claim included some machine-like elements such as a wired communication interface. However, the machine elements were all known in the prior art. The Examiner had thus rejected the claims as lacking patentable subject matter – noting that the physical ties were merely “extra-solution activity.” On appeal, the Board reversed – holding that the “extra-solution activity” doctrine “is more properly applicable to cases where Appellant is attempting to circumvent the prohibition on patenting abstract ideas by adding insignificant and unrelated activity. . . . Here, however, the storing and transmitting steps are clearly integral to the selection and delivery of media previews.”

Three cases where the Board found no statutory subject matter:

Ex Parte Rigoutsos, App. No. 2009-010520 (BPAI 2012). The Board affirmed a Section 101 rejection of the claimed “method for annotating a query sequence.” The method included three steps: “accessing patterns associated with a database comprising annotated sequences; assigning attributes to the patterns based on the annotated sequences; and using the patterns with assigned attributes to analyze the query sequence.” In its analysis, the Board found that the claimed method failed to satisfy the Machine-or-Transformation test and therefore failed satisfy the patentable subject matter test of Section 101. “Appellant’s argument does not identify a statutory transformation, and we will sustain the rejection of representative independent claim 1 and its dependent claims 2-17.”

Ex Parte Webb, App. No. 2010-008274 (BPAI 2012) The Board affirmed a Section 101 rejection of the claimed “method for playing a card game.” The method includes the seeming physically transformative step of “dealing two cards to a player.” However, the specification was clear that the cards could be either physical or virtual. In analyzing the meaning of “cards,” the Board determined that cards as claimed “are not an apparatus [or a] machine [but rather are] directed to a general concept that is abstract and sweeping as to cover both known and unknown uses of the concept and be performed through any existing or future-devised machinery.” This rejection is akin to the Supreme Court’s rejection of Morse’s telegraph patent that attempted to claim the use of electro-magnetism to transmit a signal – regardless of the machine used to generate, transmit, or decode the signal. Here, the Board found that the “card limitation” added no patentable subject matter hook because it contains “no limitations as to the mechanism for playing the game. The claimed method does not sufficiently recite a physical instantiation. We conclude that Appellant’s claims attempt to patent and preempt an abstract idea of the game in all fields, and thus is ineligible subject matter under 35 U.S.C. § 101.”

Ex Parte Edelson, App. No. 2011-004285 (BPAI 2012). Edelson’s patent application is directed to a “computer implemented method” for creating asset backed derivatives. Other than the preamble, the claims do not recite any particular link to a particular machine. Thus, the Board easily rejected the claim as reciting “no more than the abstract concept of issuing an abstract intangible asset. As in Bilski, a patent including these claims would allow the Appellant to pre-empt the use of this approach in all fields, and would effectively grant a monopoly over an abstract idea.”

67 thoughts on “BPAI On Statutory Subject Matter

  1. An examiner,

    You need to go read Bilski AFTER you have understood how to read case law.

    Quite the opposit effect of “but not the only test” is the illbegotten treatment that decision is being “held” to mean.

    It simply DOES NOT MATTER that “However, the S. Court gave no other tests by which to judge.” That’s not necessarily what the Supreme Court does.

    Your “post-Bilski guidelines” have NO force of law. ZERO. Got it? “Sides, your “whole bunch of factors” is not the MOT test. It would be a GIANT FAIL if you were to take the same test and merely restate it in a bunch of different ways.

    Come back when you understand why.

  2. Bells you need to reread Bilski. MOT was held to be a helpful and useful tool, “but not the only test”. However, the S. Court gave no other tests by which to judge. Therefore the USPTO is again using the MOT test because it’s the only tool to survive the S. Court, but the USPTO has couched the MOT test in terms of an abstract idea test and “abstract idea factors” which are just the MOT test restated in a bunch of different ways.

    Go read the post-Bilski guidelines, it’s the MOT test restated. The S. Court punted in Bilski and we’re all suffering from it.

  3. It is not always in their best interest to fight the “injustices” of the PTO.

    Of course it is not. And just as equally, you owe the client the explanation of what the “right” and “fight” entail.

    It is always up to the final decision of the client (as long as they remain a client).

    And of course, we know that clients are not the only “blowhards” out there.

    Don’t worry perspective, you will be missed for the appropriate amount of time.

  4. Now I remember why I haven’t bothered to read this blog for such a long time. It is full of blowhards that act as if the world will bow to their very will. I’m not going to waste any more time trying to explain Bilski or the PTO’s implementation. If you want to surround yourself with yes-men attorneys who are more than willing to soak you with attorney fees to “fight” for you, then go ahead. Spend and fight to your heart’s content. I am going to continue to give practical advice to my client to seek their best interest whether it be appeal or not. It is not always in their best interest to fight the “injustices” of the PTO.

  5. Max: “And, it seems to me, in its conduct, the PTO is implementing Bilski very faithfully.”

    Which Bilski Maxie? If the PTO is following the law as interpreted by the Supreme Court they are supposed to be using Diehrs concept and application test and using the MOT only as a clue.

    And thats a FACT!

    At least learn the US law before opening your mouth and blowing your fish and chips hot air around here.

  6. IANAE: “Bilski created very little space, if any at all, between MoT and patent eligibility.”

    Have you been drinking again???

    The Supreme Court in Bilski struck down the MOT as the sole test.

    The Supreme Court in Bilski refused to exclude business methods as statutory subject matter.

    The Supreme Court in Bilski reaffirmed Diehr, and its analysis and test, as controlling case law!

    You need to take off your anti patent tinted glasses and see things the way they really are.

    All it takes is one applicant willing to challenge the illegal practices of the PTO before the CAFC and Supreme Court and the rice paper wall that you cant see passed will be torn apart.

  7. perspective:”So we play by the rules set by the PTO and in this case, if you don’t meet MoT, 99% chance you won’t win with the Examiner or the BPAI.”

    No “WE” don’t. My attorney’s and I play by the rule of law!

    And I would hope as a competent and ethical patent attorney you would explain to your client what the law is and their legal rights.

    And if you did not have the guts and/or expertise to fight for those rights, I hope you would refer them to an attorney that would!

  8. anon:perspective,”If you are unwilling to fight for what your client deserves, then your clients deserve better.”

    AI: “This is a Ned perspective for certain. And I would NEVER hire an attorney that would not go to the mat for me as a client.”

    anon: “Let’s not forget that the BPAI is not an independent judicial body.”

    Exactly! After all it was the BPAI that created the illegal policy of the MOT being a sole test in the first place.

    It was the PTO that created a technological arts test when no such requirement existed in the Constitution or the statute!

    It was the PTO that did not allowed business methods as statutory subject matter when again no such exclusion existed in the Statute and the Supreme Court never said such!

    And here we have an attorney that is willing to roll over and capitulate to the whims of the PTO and examiners like 6 rather than fight for the law and the legal rights of their client!

    It reminds me of Scar in the Lion King willing to make friends with the hyena’s.

    Well I tell you, I dont want a Scar, I want Mufasa!

    All I can say is beware my fellow Inventors. Be careful who you hire and interview them carefully. You just might be sleeping with the enemy!

  9. perspective:” In addition, what are you going to argue on your appeal to the CAFC? ”

    I will argue that the CAFC In re Bilski test, can’t supersede the Supreme Courts Diehr concept and application test, because Diehr controls.

    I will cite the Supreme Court Bilski decision as evidence that Diehr controls as follows:

    “Finally, in Diehr, the Court established a limitation on the principles articulated in Benson and Flook.” BILSKI v. KAPPOS Page 14.

    I would further argue that the BPAI and the CAFC do not have the authority to overturn Supreme Court precedent and both are bound by the high Courts decision.

    Then, after establishing this fact I would proceed to demonstrate how my invention adhered to the analysis in Diehr and indeed passes the Diehr test, which I like to refer to as DCAT.

    This will be done by completing a two step process.

    1. First as the Actual Inventor I would identify the concept of my invention.

    2. Then I would show the application of my concept to a specific marketplace and/or industrial process.

    To buttress my position I would further cite the Courts Bilski ruling adhering to Diehr as follows:

    “Diehr explained that while an abstract idea, law of nature, or mathematical formula could not be patented, “an application of a law of nature or mathematical for- mula to a known structure or process may well be deserv- ing of patent protection.” BILSKI v. KAPPOS Page 14.

    In conclusion I would cite Research Corp and Ultramercial as examples of how the CAFC applied the Diehr test, and followed the Courts ruling to adhere to Diehr as controlling case law.

    And if by chance the CAFC disagreed and ignored the Supreme Court I would ask the Court to take the case and answer two questions.

    1. Is Diehr’s concept and application test still good law and controlling law as established in BILSKI v. KAPPOS?

    2. Is the MOT of in re Bilski ino longer the “clue” but now the “test” in replacement for Diehr?

    In effect I would be asking the Court to assert its dominance over the CAFC and the PTO.

    And guess what?

    I would win!

  10. Perhaps “perspective” should have widened his view and read this post prior to responding to Anon.

    Sides which, “perspective,” how is running from the issue and caving into the Office and BPAI shenanigans “address the matter” Do you know what happens when you feed a wild animal? It doesn’t go away.

    Or are you denying the universal benefit that accrued when Dr. Tafas took a stand and said “No!”

  11. It’s never “worthless”,

    LOLZ – says the pathetic, syncophantic anti-patent txxbagger blogtroll.

  12. It’s never “worthless”, sockie, to highlight the fact you’re nothing but a pathetic, syncophantic patent txxbagger blogtroll.

  13. anon,

    Your response did nothing to address the matter we are discussing. Suggesting that I don’t fight for what my client deserves is pointless. Can you at least provide some semblance of an intelligent analysis? Most clients that I have worked with DO NOT WANT to spend the money and time to appeal to the CAFC and the SC. It is a very expensive ordeal.
    Furthermore, as I pointed out in my post, you can’t argue at the CAFC that the BPAI applied the wrong test. You will have to argue that a different interpretation should have been reached and so you will have to go through this appeal for every case.

    Instead of advising my clients that in every case we should fight for “what they deserve” despite the costs, time, and likelihood of success, I try to give them the advice that will best benefit them given their overall business strategy and the potential value the patent is for them. Each individual patent is not a world unto itself. You have to consider how it fits into their overall strategy.

  14. “So, BPAI quotes the CAFC Bilski case, which incorrectly stated that MOT is ‘the’ governing test for § 101 eligibility, and then has the audacity to state that this was affirmed by the Supreme Court, when in fact this was precisely the point on which the Supreme Court disagreed.”

    The APJ who wrote that decision is a lifer and has the same understanding of the way case law is applied as does the average GS-5 examiner. Or 6.

  15. Why is it reasonable to interpret a claim to be so broad that it won’t meet 101?

    Why is it reasonable to draft a claim to be so broad that it won’t meet 101?

    If a claim is drafted that broadly, it’s only reasonable to interpret it that broadly. If that’s a problem, the applicant can always amend it.

  16. Ex Parte Hu was about the ridiculous transitory vs. non-transitory scheme conceived in the USPTO by people who had too much time on their hands.

    In Ex Parte Hu, claim preambles with “computer-readable storage medium” in them don’t need the additional magic words “non-transitory” as in “non-transitory computer-readable storage medium” to meet 101. However, if the claim preamble includes “computer-readable medium,” you gotta put non-transitory” as in ” non-transitory computer-readable medium” to meet 101 or else the gates of hades will open.

    Why is it reasonable to interpret a claim to be so broad that it won’t meet 101? No one is going to do that in the real business world.

  17. Ex Parte Hu was about the ridiculous transitory vs. non-transitory scheme conceived in the USPTO by people who had too much time on their hands.

    In Ex Parte Hu, claim preambles with “computer-readable storage medium” in them don’t need the additional magic words “non-transitory” as in “non-transitory computer-readable storage medium” to meet 101. However, if the claim preamble includes “computer-readable medium,” you gotta put non-transitory” as in ” non-transitory computer-readable medium” to meet 101 or else the gates of hades will open.

    Why is it reasonable to interpret a claim to be so broad that it won’t meet 101? No one is going to do that in the real business world.

  18. From page 4 of the Ex parte RIGOUTSOS case (see link to des.uspto.gov ):

    “The Court of Appeals for the Federal Circuit (“CAFC”) has clarified the law regarding patent eligible subject matter for process claims. In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) (en banc), aff’d sub nom. Bilski v. Kappos, 130 S. Ct. 3218 (2010). The en banc court in Bilski held that “the machine-or-transformation test, properly applied, is the governing test for determining patent eligibility of a process under § 101.” Id. at 956.”

    So, BPAI quotes the CAFC Bilski case, which incorrectly stated that MOT is “the” governing test for § 101 eligibility, and then has the audacity to state that this was affirmed by the Supreme Court, when in fact this was precisely the point on which the Supreme Court disagreed.

    Wow. Later in the decision BPAI does a better job on the legal framework for § 101 analysis, but this still strikes me as remarkable.

  19. “I’m just following the current law — noting wrong with that. Also, at least I’m not goofing off on the blog on the taxpayer’s dime.”

    Taxpayers fund the PTO now?

  20. “all they needed to do was put in some ‘key words’ and he would be all good to go.”

    yup … throw a processor in there and the claims are good. Seen it done dozens and dozens and dozens of times.

  21. “Lulz. Keep thinkin’ it bro”
    I see that you believe in unicorns and big foot too.

    “So you say…”
    easy peasy lemon squeezy

    “Yes I give you the Nuijten part, we both understand it very well. The Nuijten problem however is [blah blah blah]”
    You need to work on that blah blah blah.

    “I know, you’ve been scamming people for awhile.”
    I’m just following the current law — noting wrong with that. Also, at least I’m not goofing off on the blog on the taxpayer’s dime.

    “If I could get in the Webster I would totally be cool with being under megalomaniac.”
    I have no doubt about that.

  22. ” but real heros like Dr. Tafas, Dave Boundy and Ron Katznelson ”

    I loled. And this is totally not a trolling, I did, in fact, lol. I’m loling right now!

  23. Depends on the panel. Some judges feel that all you need is the “gist” of the invention and claim limitations are superfluous.

  24. And it should be taken as a matter of course that the client’s wishes are what are being represented in any further litigation for rights – any efforts with and above the examiner.

    I trust that you as good counsel appropriately inform the client of all concerns, including, in your professional judgment, the likelihood of success, as well as other options to explore.

    The point being, of course, that if a fight is what is requried to earn the rights your client deserves, and the client wants those rights, shying away because the Examiner of the BPAI said ‘boo’ is a grave disservice.

  25. perspective,

    If you are unwilling to fight for what your client deserves, then your clients deserve better.

    Perhaps I am overreading your post as some de facto, “can’t fight city hall” mentality, but real heros like Dr. Tafas, Dave Boundy and Ron Katznelson simply do not let “the machine” take away rights or do things merely because it makes things easy for “the machine.”

    Let’s not forget that the BPAI is not an independent judicial body. “Winning” with the examiner or at the BPAI should not be your barameter of success – that is much too low of a hurdle.

  26. ^that is what denial looks like. Apparently all they needed to do was put in some “key words” and he would be all good to go.

  27. The writing, issuing and enforcing of Beauregard claims is one of the largest industries in this country? Because that comes as news to me sir.

  28. “Don’t take what a single judge says in dicta as the law.”

    Lulz. Keep thinkin’ it bro.

    “Sorry to inform you, but there isn’t a single claim to an alleged abstract idea that I cannot transform into statutory subject matter.”

    So you say…

    Apparently all Bilski needed to do was hire you. LoL.

    “Unfortunately for you, Linn & Dyk aren’t going to be on the Federal Circuit much longer (look up their ages)”

    And you think Newman and Rader are? How is Newman still alive anyway? Dark sorcery?

    “Again, read Nuitjen. Also, “pretty much idential” is not the same as identical. One claim covers only statutory subject matter, the other claim allegedly covers both statutory and non-statutory subject matter.”

    Yes I give you the Nuijten part, we both understand it very well. The Nuijten problem however is unrelated to issues of preemption of judicial exceptions.

    “The claims I’ve been getting allowed today are the same claims I got allowed 10 years ago. Some have minor changes to appease the USPTO and its “101 flavor of the month” but others don’t.”

    I know, you’ve been scamming people for awhile.

    “I’m sure if you contact this website, they may allow you to post your picture with this definition:”

    If I could get in the Webster I would totally be cool with being under megalomaniac.

  29. “I agree with all of them except Ex Parte Rigoutsos”

    That is a case where all it is going to take is just a few key words and the Examiner is going to withdraw the 101 rejection.

    The interesting part of this application is the following discussion on page 12:
    Independent claim 1 is rather broad and does not expressly recite any distinguishing details with respect to the claimed “patterns,” “attributes,” “annotated sequences,” or “query sequences” with which to distinguish the claimed invention. Therefore, the
    labels associated with the data are essentially nonfunctional descriptive material since the claimed “using the patterns with assigned attributes to analyze the query sequence” may be any type of use (either direct or indirect).

    The BPAI is arguing that the “labels” for the data is nonfunctional descriptive material — which is “code” for say that they are going to ignore those limitations. This would be an interesting case to take to the Federal Circuit as I doubt they would let the BPAI ignore claim limitations.

  30. the fact remains that the single defining factor was MoT.

    This is what I’ve been consistently saying since Bilski. Bilski created very little space, if any at all, between MoT and patent eligibility.

  31. May I just say to “perspective”: Three Cheers, for a breath of fresh air round here.

    And, it seems to me, in its conduct, the PTO is implementing Bilski very faithfully.

    But just in case another Morse comes along, or an advocate that can sell his client’s invention as another Morse Code, SCOTUS has deliberately given the PTO enough wiggle room to accommodate such a ground-breaking invention.

  32. In addition, what are you going to argue on your appeal to the CAFC? You can’t argue that they haven’t applied the right test. The BPAI will likely have said that MoT was not the only test, but that after weighing all the factors, they found the claim to be non-statutory. You have to convince the CAFC that after weighing all the factors, your claim is statutory. Even if you succeed, the PTO will not change its implementation. On paper, they are following Bilski. However, if you look at all of the decisions, you will see that if you don’t meet MoT you are not going to win at the BPAI.

  33. I have read Bilski. I have also read virtually every BPAI decision on this point for a period of about 8 months after Bilski. In every case that I read, if the MoT test was met, the claim was found to be statutory. On the other hand, if the MoT test was not met, the claim was found to be non-statutory. There was not a single instance of a claim not meeting the MoT and still being statutory. Likewise, there was not a single instance of a claim meeting the MoT test and being found non-statutory. On some occasions they added additional analysis, but the fact remains that the single defining factor was MoT.

    There is a world of difference between theory and implementation. It might be true that if you were to appeal to the CAFC and the SC, you would win, but most clients don’t want to spend that money and time. So we play by the rules set by the PTO and in this case, if you don’t meet MoT, 99% chance you won’t win with the Examiner or the BPAI.

  34. I’m guessing that “one of the largest industries” that is imperilled by the direction the caselaw is taking is the industry of writing US patent applications directed to abstract business methods and ideas for computer programs. Or is that just a Bad Joke on my part?

  35. I agree with all of them except Ex Parte Rigoutsos. What if they “accessed the stored data with a computer” and “the computer analyzed the data as a function of…” and “they wrote the output to the server, linking the output with the corresponding data.”

    I get the “abstract idea” thing, but the law says that you cannot claim an abstract idea, not that you can’t have a claim that embodies an abstract idea. To the contrary, that’s essentially what every claim does.

    This case is too close to the line. Deal with it on 102/103, and if you can’t; allow it.

  36. Yes, what a great idea: eliminate one of the largest industries in this country.

    This is proof that govn’t work rots your brain.

  37. “I’m aware of what the ‘whole point’ of claim drafting is thx.”
    You really don’t.

    “I’m also aware that the court does not take lightly to its prohibition being overcome in substance by changes in form.”
    Don’t take what a single judge says in dicta as the law. Sorry to inform you, but there isn’t a single claim to an alleged abstract idea that I cannot transform into statutory subject matter.

    “And the answer is pretty much nothing, except only signals which we can remove from the analysis pretty easily because everyone already knows they’re not going to get a patent on those.”
    Case in point as to why you don’t understand claims or case law. There is a reason signal claims are not considered statutory subject matter. I suggest you read Nuijten to figure it out.

    “Tell it to the cybersource judges and tell it to the USSC when a case like this finally gets there. I doubt they’ll be amused at all.”
    Unfortunately for you, Linn & Dyk aren’t going to be on the Federal Circuit much longer (look up their ages) — plus they’ll buy my claims just like the rest of the USPTO does. I’m not worried about SCOTUS because your logic stinks and is filled with huge holes.

    “So wait, you think that drafting magically saves the claim from being invalid when the scope of the two claims is pretty much identical?”
    Again, read Nuitjen. Also, “pretty much idential” is not the same as identical. One claim covers only statutory subject matter, the other claim allegedly covers both statutory and non-statutory subject matter.

    “as you guys always are when my views go mainstream”
    The claims I’ve been getting allowed today are the same claims I got allowed 10 years ago. Some have minor changes to appease the USPTO and its “101 flavor of the month” but others don’t.

    I’m sure if you contact this website, they may allow you to post your picture with this definition:
    link to merriam-webster.com

  38. I doubt if MM cares whether it is 112 or 102/103 as opposed to 101.

    Yes, the WHATEV is strong in that one.

    But that’s not a feature.

  39. Ned: “In the end, the MOT test remains the primary test.”

    No it is NOT!

    Did you not read what Bells and Salivation posted above?

    Have you NOT read Bilski for yourself?

    STOP REPEATING IT LIKE AN IN SANE PERSON.

    Yes, it is possible an examiner may misapply the law and use MOT to reject but that is what appeals are for and why we have the CAFC and the SCOTUS.

    Because at the end of the day its the ACTUAL LAW, that rules and not your SHOULD BE LAW.

  40. But at least all nine Justices agreed – MOT was not the savior. Please stop posting as if it was, as if it is, as if it will be.

  41. But the PTO is now rejecting based on the MOT

    Not likely (and if so, not proper).

    As Bilski indicated MOT – alone – is insufficient as a clue. Passing MOT indiactes patent eligible subject matter, ans since 101 is a coarse filter, most likely will alow the claim to move on to 102/103/112 analyis. NOT passing the MOT clue will NOT on its own result in a rejection. The Office will then apply at least one other test in conjunction prior to rejecting claims.

    To do so otherwise FAILS what the Supreme Court held in Bilski. MOT, by itself, is simply not THE clue.

    Let’s try to keep a little perspective here.

  42. So long as all of them die, in one mass extinction, I doubt if MM cares whether it is 112 or 102/103 as opposed to 101. I can certainly say I don’t care which it is, to me they offend every statutory req we have except perhaps the enablement req. However, I do limit my rejections so as not to cause to much of a ruckus.

  43. Les, no doubt the statutes do not require a transformation.

    But the PTO is now rejecting based on the MOT and then using that rejection to shift the burden to the applicatant. Of course, they use the magic words from Bilski, but the real substance of the rejection is the MOT.

  44. The cases confirm that the MOT is alive and well in the PTO. What they now do is conduct an MOT test on method claims. If the claims fail that test, they now simply recite the BS “wholly preempt” lingo from Bilski as “magic words.”

    In the end, the MOT test remains the primary test.

  45. Malcolm, I think the better solution is to hand Beauregard claims under either or both 112, and 102/103. The Government brief in Prometheus has me somewhat convinced.

  46. A statutory transformation? What’s that? There is nothing in the statue about transformations. Transformations are judicial nonsense.

    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.

    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.

    (c) The terms “United States” and “this country” mean the United States of America, its territories and possessions.

    (d) The word “patentee” includes not only the patentee to whom the patent was issued but also the successors in title to the patentee.

    (e) The term “third-party requester” means a person requesting ex parte reexamination under section 302 or inter partes reexamination under section 311 who is not the patent owner.

  47. I’m aware of what the “whole point” of claim drafting is thx. I’m also aware that the court does not take lightly to its prohibition being overcome in substance by changes in form.

    The issue here is simple, what all is covered by the claim that is rejected which is not covered by the claim which was allowed? And the answer is pretty much nothing, except only signals which we can remove from the analysis pretty easily because everyone already knows they’re not going to get a patent on those. And whether or not that is enough of a difference or not is something a court will have to decide. And so far, the only court to weigh in at all on the issue was like “LOL NOPE, but here let us go ahead and help you out and construe your device as a method since you are drafting challenged”.

    “Call it whatever you like, but it works and it will always work so long as the scope of patents are defined by the words of a claim.”

    Tell it to the cybersource judges and tell it to the USSC when a case like this finally gets there. I doubt they’ll be amused at all.

    They’ll be all: So wait, you think that drafting magically saves the claim from being invalid when the scope of the two claims is pretty much identical? In other words saying form triumphs over substance in some cases, specifically this case?

    And you’ll be like: OH YES SIR MR JUDGE SIR! DRAFTING IS TEH AWESOMEZ SIR!

    And they’ll be like: lulz, ok, the case is submitted thx.

    You watch, whether it is you or some other schmuck, we’ll see that exact oral arg go down in a few years and I WILL BE THERE TO LOL when the claim goes under. And you will be there to qq, as you guys always are when my views go mainstream.

  48. Ex Parte Hu, App. No. 2010-000151 (BPAI 2012). The examiner rejected claims under Section 101. On appeal, the BPAI held that the claimed “computer-readable storage medium” is “directed to a tangible storage medium, which can be read by a computer” and therefore fall “within one of the four statutory classes of 35 U.S.C. § 101″ and qualify as patentable subject matter. The Board distinguished from a broader claim of a “computer readable medium” that would not qualify as tangible.

    LOL. Because “computer readable medium” is broader and includes signals? I haven’t looked at the claims but I’m 99.9999% certain that Mr Hu hasn’t invented a new, non-obvious “storage medium”. He’s allegedly “invented” something completely different, probably an obvious method of processing information USING A POWERFUL COMPUTER BRAIN (can you imagine? using a computer, of all things, to process information!!), and why should it matter if the instructions that are read by the computer are “stored” on an unpatentable (i.e., ancient) scroll or transmitted on a mxxxxxxfxxxxx signal?

    The softiewofties have turned our patent system into a joke. It’s time to terminate their accounts.

  49. “…but it works and it will always work so long as the scope of patents are defined by the words of a claim.”

    6 missed that day of patent academy when they explained that rather basic concept. He’s been behind the curve ever since.

  50. DRAFTING TRICKS THAT ALLOW YOU TO PATENT THE OTHERWISE UNPATENTABLE

    I think the term of art for this is “patent preparation and prosecution.” And people pay dearly for it, especially when it’s done well.

  51. “how much more blatant an indication does a court need that it is a drafting trick.”

    Hello ignor-amus … the whole point of claim drafting is to distinguish the patentable from the unpatentable – this includes distinguishing in terms of both prior art and statutory subject matter.

    Adding limitations to the claims is what separates unpatentable abstract idea from patentable subject matter. Call it a “drafting trick.” Call it whatever you like, but it works and it will always work so long as the scope of patents are defined by the words of a claim.

  52. I’m sorry the way I wrote my little passage led your tard brain to believe that I meant “the act of storage” as in “storing”, when I literally only meant adding the word “storage” as in the “thing” storage to the claim. As in, they made the medium be a “thing” by adding the word storage. It is a drafting trick, nothing more. It is most blatantly, as shown in this case, a drafting trick. You have the two instances right side by side in this case, how much more blatant an indication does a court need that it is a drafting trick? Drafting tricks and their prevention is precisely what the entirety of the BFD trilogy of cases is about killing. And the recognition of this is why Cybersource came out the way it did.

    Why it is so hard for some people to grasp is simply beyond me. I suppose they need a court to write it out for them in black and white: HEY TA RDS STOP WITH THE DRAFTING TRICKS THAT ALLOW YOU TO PATENT THE OTHERWISE UNPATENTABLE K? Maybe if they just came right out and said, perhaps copy and pasted it 50 times in a precedential decision, more people would pay attention.

  53. “yet ‘storage’ is not considered to be post-solution activity and a blatant attempt to circumvent the prohibition while still getting practically the same coverage (save over signals of course).”

    Hey examiner-tard!!!! Storage is a thing — not an activity. Learn how to read.

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    Let me make this simple, there is a difference between “storage” and “storing.” Do I need to explain to you how to use a dictionary?

  54. “holding that the “extra-solution activity” doctrine “is more properly applicable to cases where Appellant is attempting to circumvent the prohibition on patenting abstract ideas by adding insignificant and unrelated activity. . . ”

    Aka 6 is totally the man and called it years in advance. Maybe they’re fans of mine.

    “Ex Parte Webb, App. No. 2010-008274 (BPAI 2012)”

    A good decision.

    “As in Bilski, a patent including these claims would allow the Appellant to pre-empt the use of this approach in all fields, and would effectively grant a monopoly over an abstract idea.”"

    Music to my ears. Now if only they’d get to teaching their ta rds in QA/Appeals specialist. They have their own little rules that they wish to play by and do not want to give them up. Apparently Bilski wiped several customary arts practically off the map and they totally do not want that to happen.

    The one thing in this thread which is funny to me is that you have boards noting correctly how to apply the Flook approach to the exceptions and then you have a board like in Hu where apparently they have 2 claims, differeing by only one word (in terms of 101 substance) and yet “storage” is not considered to be post-solution activity and a blatant attempt to circumvent the prohibition while still getting practically the same coverage (save over signals of course). I don’t mind this reasoning that bad and I will apply it in my day to day, but I do get the feeling that if the supremes were tasked with this issue it would be decided swiftly and not in the applicant’s favor.

  55. “Two cases where the Board found no statutory subject matter:” should be “found statutory subject matter:”

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