Examining Subject Matter Eligibility under Mayo v. Prometheus

By Dennis Crouch

In the wake of the Supreme Court’s decision in Mayo v. Prometheus, the US Patent & Trademark Office has distributed a short memorandum to examiners providing additional guidance. One problem with the Prometheus decision is that it does not appear to consider administrative practicality and there be an ongoing open question as to whether the USPTO will be able to successfully implement the proffered rule of subject matter eligibility. Regardless, the USPTO must follow the law to the best of its abilities and that means that it must examine patents using the Mayo standards.

In the three page “preliminary” document sent to the examining corps, the PTO’s chief examination policy guru Drew Hirshfeld described the USPTO’s conservative new approach:

As part of a complete analysis under 35 U.S.C. § 101, examiners should continue to examine patent applications for compliance with section 101 using the existing Interim Bilski Guidance issued July 27, 2010, factoring in the additional considerations below. The Interim Bilski Guidance directs examiners to weigh factors in favor of and against eligibility and reminds examiners that, while the machine-or-transformation test is an investigative tool , it is not the sole or a determinative test for deciding whether an invention is patent-eligible.

Examiners must continue to ensure that claims, particularly process claims, are not directed to an exception to eligibility such that the claim amounts to a monopoly on the law of nature, natural phenomenon, or abstract idea itself. In addition, to be patent-eligible, a claim that includes an exception should include other elements or combination of elements such that, in practice, the claimed product or process amounts to significantly more than a law of nature, a natural phenomenon, or an abstract idea with conventional steps specified at a high level of generality appended thereto.    

If a claim is effectively directed to the exception itself (a law of nature, a natural phenomenon, or an abstract idea) and therefore does not meet the eligibility requirements, the examiner should reject the claim under section 101 as being directed to non-statutory subject matter. If a claim is rejected under section 101 on the basis that it is drawn to an exception, the applicant then has the opportunity to explain why the claim is not drawn solely to the exception and point to limitations in the claim that apply the law of nature, natural phenomena or abstract idea.

The USPTO is continuing to study the decision in Mayo and the body of case law that has evolved since Bilski and is developing further detailed guidance on patent subject matter eligibility under 35 U.S.C. § 101.

The document describes the Mayo decision as follows:

The Supreme Court found that because the laws of nature recited by the patent claims – the relationships between concentrations of certain metabolites in the blood and the likelihood that a thiopurine drug dosage will prove ineffective or cause harm – are not themselves patent eligible, the claimed processes are likewise not patent-eligible unless they have additional features that provide practical assurance that the processes are genuine applications of those laws rather than drafting efforts designed to monopolize the correlations. The additional steps in the claimed processes here are not themselves natural laws, but neither are they sufficient to transform the nature of the claims.

In this case, the claims inform a relevant audience about certain laws of nature. Any additional steps consist of well-understood, routine, conventional activity already engaged in by the scientific community. Those steps, when viewed as a whole, add nothing significant beyond the sum of their parts taken separately. The Court has made clear that to transform an unpatentable law of nature into a patent-eligible application of such a law, one must do more than simply state the law of nature while adding the words “apply it.” Essentially, appending conventional steps, specified at a high level of generality, to laws of nature, natural phenomena, and abstract ideas cannot make those laws, phenomena, and ideas patent-eligible.

… A claim that recites a law of nature or natural correlation, with additional steps that involve well-understood, routine, conventional activity previously engaged in by researchers in the field is not patent-eligible, regardless of whether the steps result in a transformation. On the other hand, reaching back to Neilson, the Court pointed to an eligible process that included not only a law of nature (hot air promotes ignition) but also several unconventional steps (involving a blast furnace) that confined the claims to a particular, useful application of the principle.

The document does not address whether examiners should use the same analysis when considering claims that include an “abstract idea” such as a mathematical algorithm (i.e., software).

I suspect that the USPTO will wait for additional movement on the Myriad case before releasing a full set of new guidelines to examiners.

Read the memo: /media/docs/2012/03/mayo_prelim_guidance.pdf

117 thoughts on “Examining Subject Matter Eligibility under Mayo v. Prometheus

  1. Why not summarize Mayo v. Prometheus thusly: You may not claim a patent on a discovery, only on an invention. It’s really as simple as that. Prometheus did not “invent” the range of values that the drug was effective at; it merely discovered them.

    Now, whether adding additional limitations to a claim that makes a discovery and limits this discovery by creating a novel method, manufacture, etc. may make a particular application of a discovery patentable is another story.

  2. At the proper abstraction level, it’s all just a big toybox.

    Noonan put it adroitly: Biotech has met its Benson in the Court’s Prometheus decision.

  3. “mathematical algorithm (i.e., software)” – I strongly disagree with this categorization. Of course, software does exist to execute, e.g., the Pythagorean theorem on a computer, but most software includes much more that mathematics. Saying that any given set interacting software objects or modules (consider World of Warcraft, for example) contains just “mathematical algorithms” is like saying that any arbitrary set of objects contains just “natural phenomena” – ultimately, they are only collections of atoms.

  4. I’ve discovered rose petals cure epilepsy.
    Its a law of nature – simply “applying it” by adminstering it to a subject – not now patentable.

  5. “6, I thought the most interesting point of his paper was that many inventions in their early years would not pass the MOT”

    I found that mildly interesting that he alleged that. His evidence was sorely lacking. If his little charts of percentages were based on reasoning similar to what he showed off in the rest of his article I doubt very seriously if the percent that actually passed the MOT ever dipped below 95% for the periods he showed.

    “Nothing seems to be transformed, yet these things were clearly patentable.”

    Nearly all of them that I noticed used a special apparatus, that, even though “simple” was even so a special apparatus.

    And even if the office did lower their standards due to the arts being so primitive, or just to give a brother a break, that hardly means we would need to do the same today. The question is not what was allowed, the question is what passed judicial scrutiny. If people 100 years from now looked back at our post-SS mess of Business methods would you think that they would believe that the Bilski decision never should have happened simply because the office fed up for years?

  6. Clearly such is a batardization without any legal footing.

    You have chosen to treat one of the categories as purely a subset of the other categories.

    There is nothing ANYWHERE that leads credence to ANY supposition that this is something that Congress had in mind, EVER.

    This is pure wankery.

  7. Unworkable–”thought” insufficiently defined.

    Unfair–so-called “rule” will be applied inconsistently, as it is incapable of being precisely, and therefore consistently, articulated

    That’s a bit harsh, but your original statements missed the point: is this the best way to further the aims of Congress as expressed in 35 USC?

    “No situations where the analysis would lead to the wrong result.”

    This is, of course, impossible to know, and absurd of you to suggest.

    And once again, my [superior] set of rules accords perfectly with your preferred outcomes.

  8. David–

    “They do not describe or stipulate for doing anything once the condition of the patient has been determined.”

    And the claims therefore lack specific, substantial, and credible utility as they are wholly inoperative, and hence do not disclose patent-eligible subject-matter under 35 USC 101, and are therefore invalid.

    Thank-you for the opportunity.

    For your argument to be more convincing and better-understood, you must go one step further in your reasoning, and ground it back in the statutory language of 35 USC. This case was all about utility, whether Breyer was bright enough to recognize it, or not. The rest of the court didn’t even care.

  9. Of course the contents of the memo, whatever they are understood to be, will be applied and mis-applied in all sorts of situations, because neither the PTO nor the examiners, nor apparently the CAFC and the USSC, understand what they mean by “natural laws” and “abstract ideas”, and if there is any difference between the two, and if so, where one ends and the other begins.

    Get ready for this opinion, and this memo, to be smeared liberally over the stack of applications currently awaiting examination, with guys like 6 acting as the manure-spreaders.

    The opinion and the memo will fertilize the soil into which the examining corps will then plant the seeds of appeal, which are sure to germinate quickly, and for the resulting appeals to grow thickly.

  10. Inventions, I see no problem always your example. You make specific reference to the claims in the Eibel process case where the Supreme Court talked about obviousness in terms of "kind" rather than "degree." I recall that somewhere in the Supreme Court jurisprudence that the Eibel process case was also referenced as a patentable use of gravity. Is there anything else that you want to talk about?

  11. 6, I thought the most interesting point of his paper was that many inventions in their early years would not pass the MOT. The so-called low technology inventions basically comprise using simple tools to construct and make things like boats and molds and like. Nothing seems to be transformed, yet these things were clearly patentable.

    That’s why I pointed Prof. Risch to my suggested outline of patentable subject matter where clearly methods of making machines, articles of manufacture, and compositions of matter are deemed patent eligible. This seems a little bit broader than the MOT, but clearly what Congress thought to be the kind of inventions they authorized as patentable subject matter.

  12. Think about it.

    Why or why not?

    Think about the examples given and the specific case law that comes to mind from the portions of my hypothetical.

    There is more than one subtle story embedded. I will not tell you more.

  13. Inventions, your new process certainly is patentable subject matter, and also probably novel and nonobvious. What are you trying to get at with your example?

  14. Malcolm, I'm not talking about something different from what is in nature. I am talking about the exact same thing that is in nature. Can one patent it upon its discovery?

  15. Why do you veer when you need to aver?

    Still waiting for the dust cloud to settle to see if Ned ackowledges the historical facts that Prof. Risch provided.

    I am curious to see how Ned will wiggle out of this.

  16. Why is Funk Bros. a POS?

    Serious questions, MM. Step up. Otherwise you’re just a windbag railing against illegal compositions claims because … why? You tell me.

  17. Take Ned’s land example and modify it.

    Instead of land, use a chemical composition, say for example, an inctricate pharmaceutical composition. Let’s call it Compound W.

    When Compound W was first invented, it was patented and enjoyed its period of exclusivity.

    That period is over.

    So like the land, Compound W is not patent eligible.

    Switch to a new invention. A new process invention. Previously, Compound W was made by a process that involved an expensive distillation procedure. The invention relies on reconfiguring a portion of the distillation equipment to alter a flow rate. No new pieces of material were added to the distillation equipment. Only one component was raised six to eight inches and the invention works purely on the basis of a law of nature (gravity). No one in their wildest imagination would have thought to do this (novelty and obviousness are not in question).

    However, because of this invention, the time frame for the process is fantastically reduced. All of the process steps are undertaken, but throughput goes through the ceiling.

    You still end up with the exact unpatentable Compound W, but you have an improved process that takes a fraction of the time and allows the consumer to enjoy the final product at greatly reduced prices.

    Is the new process patent eligible?

    Why or why not?

  18. once the condition of the patient has been determined

    Join the whatevs and the dissectionists.

  19. A mineral is a naturally occurring solid chemical substance formed through biogeochemical processes, having characteristic chemical composition, highly ordered atomic structure, and specific physical properties. By comparison, a rock is an aggregate of minerals and/or mineraloids and does not have a specific chemical composition. Minerals range in composition from pure elements and simple salts to very complex silicates with thousands of known forms. The study of minerals is called mineralogy.

    link to en.wikipedia.org

  20. Serious questions, MM. Step up. Otherwise you’re just a windbag railing against…

    The reverberations of the countless times Malcolm has not answered questions shows that once again Malcolm is accusing others of that which he does.

  21. Can one patent a preexisting human gene with a specific structure upon its discovery?

    Depends on the specific structure. If the claimed structure is different from the structure found “in nature”, they I don’t see why not.

    Again every chemical composition is related to another chemical composition that occurs in nature. Where do you draw the line, Ned, between what differences in structure render a composition “eligible” and what differences do not? And why do you draw the line at that point?

    Serious questions, Ned. Step up. Otherwise you’re just a windbag railing against isolated nucleic acid compositions claims because … why? You tell me.

  22. This is probably too late to make a comment, but I believe the heart of the decision was stated as follows:

    “The question before us is whether the claims do significantly more than simply describe these natural relations.To put the matter more precisely, do the patent claims add enough to their statements of the correlations to allow the processes they describe to qualify as patent-eligible processes that apply natural laws? We believe that the answer to this question is no.”

    I agree completely.

    Perhaps the Court should use an expression other than: “not patent a law of nature”. I interpret the above passage to mean that you cannot patent observed facts about nature that you managed to discover. You can only patent something useful that can be done as a consequence of those observed facts.

    The claims in this patent fail miserably in that respect. They do not describe or stipulate for doing anything once the condition of the patient has been determined. Therefore the claims are invalid.

  23. Malcolm: “Every composition is related to something that occurs in nature.”

    So?

    I am talking about the discovery that a certain gene having a certain structure causes cancer. The discoverer certainly did not invent that gene. It existed prior to its discovery.

    That it is new in terms of human knowledge, this is a given. But is it new in the law? I don’t think so.

    Can one patent a preexisting human gene with a specific structure upon its discovery?

    By analogy, suppose the Chinese had an ancient remedy that cured cancer. By scientific investigation, one determined that the reason it did was because of the combination of two compounds.

    Can one patent the combined compounds by describing them? Can one even patent the use of the combination for the preexisting cure?

  24. Thanks, that explains so much. I should have just been making assertions.

    Anyway, I think the Supreme Court reached the correct outcome.

  25. sockie: Somehow, some folks are trying to equate laws of nature, natural phenomena and abstract ideas as different names for the same thing. They are three different things, as concerns patent law, and should not be conflated.

    They are treated equally for the purposes of analyzing claims in the form [oldstep]+[newthought], i.e., the form that Prometheus’ claims took.

    It doesn’t matter if you are thinking about a natural law, thinking about a phenomena, thinking about an abstraction, or thinking about any other information. The analysis is identical to the analysis in Breyer’s decision because all of such claims are effectively claims to the act of thinking about something. Novel thoughts and thinking novel thoughts are ineligible subject matter.

    It’s true that some people lack the intellect to understand this or lack the moral backbone to admit that this is indisputable. But that is why, in some circumstances, the distinctions between these categories are being ignored.

  26. but mine was guided by rigorous logic, and its limits are strictly framed by the statute.

    IBP. The Anti-MM

  27. LOLZ at ANC.

    Join the happy list of those who attempt to get Ned to actually discuss “the heart of the matter” if it goes against his agenda.

  28. Somehow, some folks are trying to equate laws of nature, natural phenomena and abstract ideas as different names for the same thing. They are three different things, as concerns patent law, and should not be conflated. An abstract idea is stuff like mathematics and algorithms (software) or a method that doesn’t actually make anything new, like a way to manage a hedge fund.

    Likewise, you can’t patent fire, and you can’t patent gravity. Niether are abstract ideas – one is a natural phenomenon and the other is a law of nature. You can describe fire using abstract ideas but that doesn’t make fire an abstract idea, and you can describe gravity using abstract ideas but that doesn’t make gravity an abstract idea.

    Also, somehow, some folks are equating minerals with chemicals. Some chemicals contain minerals, but minerals are solid elemental compounds that are found in nature: iron, manganese, boron, etc. while chemicals can be molecular structures made up of several elements including minerals. Minerals are not organic in nature; while chemical compounds which are organic do sometimes have minerals as part of their molecular structure.

    So, whomever posted that minerals are made up of chemicals has it backward. Chemicals are made up of minerals and other elements.

    You cannot patent a mineral, even if it’s a newly discovered mineral, if you dig up a rock and it turns out to be a completely heretofore unknown substance. It’s still a natural phenomenon. You can patent a method for producing a new chemical compound that is not found in nature (a drug, for example, or a new kind of elastomer) but that compund won’t be a mineral by its nature (no pun intended.)

  29. currently not the patentability standard as confirmed by the Supreme Court

    Well there’s a big mistake thinking the discussion is about what the patentability standard as confirmed by the Supreme Court is.

    That’s not the point of the discussion.

    Quite evidently, the Supreme Court has got it wrong.

  30. I disagree that “There is nothing in essence any different [between an approximation] and any other tool.” I get that this is your opinion, but there isn’t anything self-evident about that. Made by man is currently not the patentability standard as confirmed by the Supreme Court.

  31. argument appears to be based on

    Nah, I don’t think the stated argument has anything to do with a need for potential fallibility. I think the FACT that fallibility is inherent is MUCH MORE persuasive.

    Put simply, man’s approximations are not nature. They are tools made by man for man. There is nothing in essence any different than any other tool.

    You indidcate that this doesn’t lead you to Einstein’s conclusion. Maybe that’s because you refuse to follow where the FACTS do lead you.

    See that MaxDrei guy about horse carcasses piling up.

  32. Perhaps you will find success with that elsewhere.

    Nah. This is the home for that.

  33. Is their a relevant distinction between a natural law and its representation?

    If you have to ask this question, then you won’t accept the answer.

  34. “Workproduct” is irrelevant because “workproduct” is not synonymous with patentable. Also, being a tool is also not a condition for patentability. Do you have a different understanding?

    Apparently, my use of the word “representations” wasn’t sufficiently clear. All natural laws require a representation of some sort. If you disagree, please provide an example. Is their a relevant distinction between a natural law and its representation?

    Going back to your self-proclaimed “perfect analogy,” all of the maps (old and new) were representations of nature. Your argument appears to be based on the potential fallibility of these representations. Potential fallibility does not lead me to your conclusion.

    I see that ad hominem attacks are still part of your persuasion style. Perhaps you will find success with that elsewhere.

  35. My point is different. If the researcher identifies that a human gene is associated with a specific disease, that is useful information indeed. But patents are not granted on information are they?

    So what is patentable?

    The novel, non-obvious isolated nucleic acid, if it exists and has substantial utility.

    The rest of your comment has no bearing on the issue we were discussing.

  36. “I think there is a high likelihood that Examiners in software cases are going to treat any mathematical computation or other data manipulation steps as abstract ideas that need to be combined with something unconventional to satisfy 101″

    Examiners will finally start applying the lawl? Heavens me!

  37. Malcolm:

    “Agreed. If I claim a “A chromosome comprising sequence ATGCGGA, where A is modified by glycosylation and T is modified by a methylation” and someone proves that a chromosome comprising that sequence existed in nature prior to my priority date, then I should not get the claim.

    You need to recognize, Ned, that such proof is not necessarily easy to come by, given the fact that the chromosomes of every living thing are continually changing. Please try to remember this fact. It’s important. If you ignore it repeatedly, I will have to assume you are being dishonest.”

    I understand your point and have agreed that you are right. Just because something is found to exist in nature that is the same as the claimed invention, doesn’t mean that it is prior art. Agreed.

    My point is different. If the researcher identifies that a human gene is associated with a specific disease, that is useful information indeed. But patents are not granted on information are they?

    So what is patentable? The use of the information to prevent the disease? The process of determining the presence of the gene? The gene itself in artificial form?

    Assuming the isolation process is well known.
    I will assume that in the very application for isolated BRCA, the applicant states that the isolated BRCA is the isolated form of a preexisting wild gene. I assume that given the information concerning the wild gene, the isolated gene is known because the isolation process is well known. If this is in fact the case, then isn’t the isolated gene known upon the discovery itself? The patentablity of the isolated gene would then critically depend on whether one can patent discovered compositions of matter.

    Let’s turn to the next question, the process. Assume it was new.
    Now, if the process of isolating the wild gene is new and non obvious, that process is clearly patentable. Your post suggests that beyond this that, if a process for isolating the gene is not known, that one should also have a right to claim both the process and the isolated compound regardless of use of the inventive process.

    I think the answer to this question has been addressed by the SC in Cochrane v. Badische Anilin & Soda Fabrik, 111 U.S. 293, 311–12 (1884):

    “There is another view of the case. According to the description in No. 95,465, and in No. 4,321, and the evidence, the article produced by the process described was the alizarine of madder, having the chemical formula C14H8O4. It was an old article. While a new process for producing it was patentable, the product itself could not be patented, even though it was a product made artificially for the first time, in contradistinction to being eliminated from the madder root. Calling it artificial alizarine did not make it a new composition of matter, and patentable as such, by reason of its having been prepared artificially for the first time from anthracine, if it was set forth as alizarine, a well known substance. The Wood Paper Patent, 23 How. 566, 593. There was, therefore, no foundation for reissue No. 4,321, for the product, because, on 312*312 the description given, no patent for the product could have been taken out originally.

    Still further, the claim of No. 4,321 is not a claim merely for the product of the process described in it, but is a claim for anything which may be called artificial alizarine, produced from anthracine or its derivatives, by either of the methods described, or by any other method, equivalent or not, which will produce anything called artificial alizarine. The scope of such a claim is seen in this suit. An article is sought to be covered by the reissue, which it is demonstrated Graebe and Liebermann never made by their bromine process, which they knew that process would not produce, which they recognized as produced first by some one else by a different process, and which has become the subject of a large industry abroad and an extensive use in this country, through discoveries made, as they acknowledge, since their bromine process was invented. After those discoveries were made, after it was seen that the bisulpho-acid process would produce desirable dye-stuffs, and could be worked practically and profitably to that end, it was sought to control the market for the product in the United States, by obtaining this reissue No. 4,321.”

    Final point, I will agree in principle that the use of the information to cure the disease should be patentable. But even that might not be the case if, given the information, the procedures claimed are routine.

    However, I will consider your post one more time to see if I missed something.

    Also, aren’t you a big fan of the recent en banc case confirming that one has to proof the process elements of a product by process claim? Have you changed religions on this issue?

  38. While I hope you are right that the memo is silent as to whether is applies in abstract idea cases, as opposed to natural law cases, I’m not optimistic that it will be interpreted that way by the Examiners.

    Under the section of the memo titled Preliminary Guidance on Examination Procedure it instructs “a claim that includes an exception should include other elements or combination of elements such that, in practice, the claimed product or process amounts to significantly more than a law of nature, a natural phenomenon, or an abstract idea with conventional steps specified at a high level of generality appended thereto.” I think that will be read as an invitation to apply the new guidance to more than just law of nature cases.

    I think there is a high likelihood that Examiners in software cases are going to treat any mathematical computation or other data manipulation steps as abstract ideas that need to be combined with something unconventional to satisfy 101.

  39. >>>I would have examined the claim differently and not have given patentable weight to the ‘wherein’ clauses in this case.<<<

    Another example is where the “printed matter exception” where the examiner gives no patentable weight to the printed matter which falls under the exception.

    If the rest of the process is merely routine stuff known in the art, then the Prometheus claims would have fallen on 103 grounds….

  40. Thus, a new mineral discovered in the earth…

    2105 Patentable Subject Matter quoting Chakrabarty.

    Minerals are made of chemicals. There are literally hundreds of things, chemicals and otherwise, still being discovered today that qualify to defeat your braying.

    You are just a noisy gong, an empty wagon.

  41. “What say you to the facts of early US patents fully embracing business methods where neither Machine nor Transformation can be found?”

    I can’t speak to ned’s opinion, but I think it fair to say that Risch, just like the other tards that tried before him, simply mischaracterizes patent after ancient patent in order to try to support his thesis. I can look at the patents he cites and I have little qualm with them being patentable. Strangely that just so happens to be because they’re generally not business methods or software.

  42. I just couldn’t resist taking a quick peek. Here’s an excerpt of this id iot’s writings:

    There were also several clothing measurement devices. Patent X4687, to
    James Wilson on February 28, 1827, shows a square for measuring cloth fortailoring. Wilson also obtained No. X7566 on May 3, 1833, for a similar device. Wilson claimed the uses of the tool as well, which makes this a business method patent.

    How on earth is claiming the use of a clothing measuring device a business method? W TF Risch? Does Risch really believe that this supposed “business method” is going to be classified in with other “business methods” by anyone, including, oh, I don’t know, the USPTO?

    “What did early 19th century business methods look like? The first one we found was the 104th patent that we could read;189 Patent No. X1377, to Samuel Randall on October 1, 1810, described a new way to teach writing. The concept is simple: small and capital letters are permanently affixed to a board with spaces next to or below them. The student’s imitation of the letters is written on the same board, but these letters may be wiped off. Thus, the student may practice writing letters over and over. ”

    How is a method of using a board that has special small and capital letters permanently attached a “business method”? W TF Risch?

    Where does he dream this nonsense up? All of those are just a small exerpt of the nonsense he considers to in some way be a “business method” despite the fact that they’re wholly unconcerned with, oh, I don’t know, business.

    His entire paper seems to boil down to: some inventors have always thought this ridiculous nonsense was patentable. What seems the obvious rebuttal is that the courts have had to be smacking them down since time immemorial. And that’s if we even grant his conclusion that some inventors thought this stuff was patentable. Which really, nearly every (if not every) example he gives is totally not even a business method or software claim.

    ““The application of a prism and pattern card, to
    regulate the operation of the hooks or teeth or dents to produce the variations in the pattern or figure.””

    ^He even has the bal ls to call that software. /facepalm. Apparently all the history books need rewriting because Mr. Risch wants subject matter for his paper about how softwarez are tots patentable!

  43. sockie:

    What about in the form of [oldstep]+[oldstep]?

    What about in the form of [oldstep]+[oldstep]+[oldstep]?

    What about in the form of [oldstep]+[oldstep]+[oldstep]+[oldstep]?

    What about in the form of [oldstep]+[oldstep]+[oldstep]+[oldstep]+[oldstep]?

    None of these implicate ineligible subject matter. It appears that you have no clue what Prometheus was about. What purpose would be gained by trying to address the other issues you raised when you ask ridiculous questions such as the one I highlighted above?

    Even claims that have no thoughts whatsoever and only all oldsteps may or may not be eligible.

    What’s your point, sockie?

    Even claims that do have newthoughts may be eligible.

    Nice strawman. I never suggested otherwise. And that’s been pointed out to you previously, sockie. Literally scores of times over the past several years.

  44. I read his other “article” if you could even call it that, where he just spouts off nonsense with nothing to back it up. I’m not even sure how he has a job doing this. Literally I could write better articles by pulling facts and other nonsense straight out of my behind right now without a team of students helping me.

    This article looks no better so I doubt I’ll bother to read it all.

    Edit: I just couldn’t resist taking a quick peek. Here’s an excerpt of this id iot’s writings:

    There were also several clothing measurement devices. Patent X4687, to
    James Wilson on February 28, 1827, shows a square for measuring cloth fortailoring. Wilson also obtained No. X7566 on May 3, 1833, for a similar device. Wilson claimed the uses of the tool as well, which makes this a business method patent.

    How on earth is claiming the use of a clothing measuring device a business method? W TF Risch? Does Risch really believe that this supposed “business method” is going to be classified in with other “business methods” by anyone, including, oh, I don’t know, the USPTO?

    “What did early 19th century business methods look like? The first one we found was the 104th patent that we could read;189 Patent No. X1377, to Samuel Randall on October 1, 1810, described a new way to teach writing. The concept is simple: small and capital letters are permanently affixed to a board with spaces next to or below them. The student’s imitation of the letters is written on the same board, but these letters may be wiped off. Thus, the student may practice writing letters over and over. ”

    How is a method of using a board that has special small and capital letters permanently attached a “business method”? W TF Risch?

    Where does he dream this nonsense up? All of those are just a small exerpt of the nonsense he considers to in some way be a “business method” despite the fact that they’re wholly unconcerned with, oh, I don’t know, business.

    His entire paper seems to boil down to: some inventors have always thought this ridiculous nonsense was patentable. What seems the obvious rebuttal is that the courts have had to be smacking them down since time immemorial. And that’s if we even grant his conclusion that some inventors thought this stuff was patentable. Which really, nearly every (if not every) example he gives is totally not even a business method or software claim.

    ““The application of a prism and pattern card, to
    regulate the operation of the hooks or teeth or dents to produce the variations in the pattern or figure.””

    ^He even has the bal ls to call that software. /facepalm. Apparently all the history books need rewriting because Mr. Risch wants subject matter for his paper about how softwarez are tots patentable!

  45. Anon, I second Malcolm’s motion that the wherein clause merely states facts that are substantially unrelated to the process claimed, but rather is a statement of the correlation itself.

    That said, if one does not agree that the correlation is a law of nature, I think the claims still fail because they are not legally new. The wherein clause is legally ignored for 102 purposes because it is a purely mental step that does not modify any physical step, substantially described by the government in its brief in this case.

  46. sockie: I am pretty sure that things exist in nature whether or not you are aware of them.

    Like what exactly, sockie? What undiscovered thing exists “in nature” right now that nobody is aware of?

    Describe it please. And let me know what policy is promoted by denying inventors of new isolated compositions patents when non-isolated compositions are discovered “in nature” after the filing? I’m really curious about that.

  47. if the claim is in the form [oldstep]+[newthought] it is ineligible under 101. Always. Every. Time.

    What about in the form of [oldstep]+[newthought]+[oldstep]?

    What about in the form of [oldstep]+[oldstep]?

    What about in the form of [oldstep]+[oldstep]+[oldstep]?

    What about in the form of [oldstep]+[oldstep]+[oldstep]+[oldstep]?

    What about in the form of [oldstep]+[oldstep]+[oldstep]+[oldstep]+[oldstep]?

    What about in the form of [oldstep]+[newthought]+[oldstep]+[oldstep]+[oldstep]+[oldstep]?

    What about in the form of [oldstep]+[newthought]+[oldstep]+[oldstep]+[oldstep]+[oldstep]+[newthought]?

    I think your rule needs something else.

    I think your rule needs to take the claim as a whole and evaluate (under other existing doctrines) whether the elements intereact with each other.

    Even claims that have no thoughts whatsoever and only all oldsteps may or may not be eligible. Even claims that do have newthoughts may be eligible.

    This was pointed out to you previously.

  48. Non Sequitur II said in reply to MM…

    I don’t believe that there is a rule stating that you can ignore mental steps for purposes of 102 and 103 which is why resort to 101 was necessary.

    Thanks, I knew that. The Supreme Court could have created such a rule in heartbeat, however, to prevent claims in the form [oldstep]+[newthought] from being granted. They could also have declared such claims to be per se unenforceable, for the same reasons that I outlined above and elsewhere here hundreds of times over the past several years.

    Reply Mar 23, 2012 at 03:21 PM Pesky Little Things Rules Be said in reply to Non Sequitur II…

    There is (was) a rule under 101 for ignoring steps as well

    Only in your mind, sockie.

  49. Let’s be clear. Yes. Let’s.

    I am pretty sure that things exist in nature whether or not you are aware of them.

    And that includes things existing in nature found floating in the gonad cells of an Antarctic sea urchin. Even one not owned by the ACLU.

  50. Silent as to the heart of the matter, not to pleasantries.

    What say you to the facts of early US patents fully embracing business methods where neither Machine nor Transformation can be found?

    Stop kicking up dust.

  51. Quite the contrary, the map analogy works because my workproduct itself is truly a map. The use of an equation is but a tool, like a screwdriver, wrench, hardrive or software product. It is a device made by man put to man’s uses to create something else made by man (see my comment about only the truly ignorant).

    Your false logic of “accordingly” is merely assuming the position you wish to prove. And in the face of a perfect analogy, you merely provide a conclusory statement of “that doesn’t work.” In truth, it is your poor logic that does not work.

    When understanding changes, the old maps have not changed. The maps still say what they always said. If those old maps were truly “laws of nature” the only way that they could be wrong is if nature itself had rewritten the law.

    That does not happen.

    The very fact that understanding does change and that old maps pass away only proves the point that such old maps were never true “laws of nature.”

    As for speaking for myself, if you would please apply some logic and train your sights on your own agenda, I would be greatly pleased.

  52. A New, you post said I was silent, etc. in view of the article. I read the article and commented on it to Prof. Risch. That is why your statement is a deliberate lie.

    Just in case my post was deleted, I will now go check to see if it is still there.

    Yes it is there:

    link to patentlyo.com

    08:36 pm

  53. I don’t believe that there is a rule stating that you can ignore mental steps for purposes of 102 and 103 which is why resort to 101 was necessary.

  54. NS, it appears he may have read my post where a claim to newly discovered land was masked as a map process, where one begins at known location, proceeds in certain directions and then arrives a destination, where the claim includes a wherein clause that describes the land, metes and bounds, just discovered.

    Can’t get a patent on land? Just patent map process.

    I think this is what the Prometheus court was driving at about dressing up a claim to a thing of nature in patent fluff. Fortunately, some can see that the Emperor really has no clothes.

  55. What is the prevarication Ned? Specifically?

    The question is deliberate and willful. That much is true.

    Just as your dodging and kicking up dust is deliberate and willful as well.

    The answer being sought is not whether you and Professor Risch exchanged pleasantries. The answer being sought goes to the heart of the matter and your unending (and apparently mislocated) crusade against business method patents. Comment on the actual facts, please. Pull those facts into the light of the day and incorporate them into your constant missives. Why do you veer when you need to aver?

    So on top of the question as to why you have been silent on the actual facts of early US patents, I want to ask you: why are you taking offense at my pointing out that you have been silent on this topic?

    One last question, does 40% seem like a significant nunmber to you?

  56. Ned: things of nature have to be considered to be part of the prior art.

    Even when they didn’t exist in the prior art or “in nature” prior to their creation and disclosure by a human? Really, Ned?

    Let’s try to be clear. I mean, this stuff is really important to some people.

  57. Paul I am not sure that there is a workable rule of law in this decision that can be extended to other cases.

    You’re wrong.

  58. The PTO and the examining corps will BELIEVE that there is such a workable rule arti

    There is a workable rule: if the claim is in the form [oldstep]+[newthought] it is ineligible under 101. Always. Every. Time.

    Completel workable. Completely fair. Completely consistent with the Supreme Court ruling (insofar as there are no situations where the analysis would lead to the wrong result). And also consistent (in terms of the result) with how the government was proposing to Examine the claims.

    Are there OTHER claim formats which are ineligible under 101 as a per se matter? Probably. We’ll do those in the future.

  59. but a product made from it might not.

    Nice. Please return the goalposts to their original position.

  60. Professor Risch and I had a polite conversation about his article concerning America's first.  I did reply to him and he appreciated my comments.

    Your post here is a deliberate and willful prevarication to the extent it states that I did not comment.

  61. Lolz to Malcolm.

    Isolated and configured, gerunds being used as structure, one in his beloved bio, the other in his h_ated software.

    He cannot win for losing.

  62. The chemical would be natural, but a product made from it might not. Assuming this chemical cures cancer, this fact is not patentable, but using this chemical to cure cancer might be.

  63. You appear to dispute that an equation is a law of nature, and feel that denigrating those that disagree is a persuasive strategy. Allow me to offer a different perspective. An equation expresses a mathematical relationship. Discovering the mathematical relationship that exists in nature does not create the relationship. Accordingly, the equation like the mathematical relationship it expresses, is a law of nature.

    Your map analogy fails because all such “maps” are representations of laws of nature. Some of them just happen to be wrong. The laws of nature did not change, but our understanding of them did.

    Lastly, please don’t speak on behalf of Einstein. Without regard to what you said or how you said it, the deceased deserve better than being used to advance an agenda.

  64. Like I said…opportunity squandered.

    But it’s worse than that. The PTO and the examining corps will BELIEVE that there is such a workable rule articulated, and that this opinion does stand for much more.

    It’s out there, and it’s a USSC opinion–a unanimous one, at that.

    A large, steaming pile of unanimity. The best we can hope to do is to avoid it, and stay upwind.

  65. I find it interesting that Ned constantly recites from old cases, and old authors on patents, loves the ancient history of Rome, and yet never has divulged the true history of US patents.

    Ned, why the deafening silence in view of Michael Risch’s America’s First Patents?

    link to papers.ssrn.com

  66. Anonexam314–

    With respect, your comment evidences the very type of institutional arrogance that would presume to substitute its own authority for that of the applicant.

    “Patentable weight”? Is that up to you, or the PTO, or the courts to judge? No, it’s not–it’s up to the applicant. Inclusion of something in a claim is the clearest indication possible that it was intended by the applicant to be considered to have “patentable weight”.

    Of course, there is no need whatsoever to discard the “wherein” clauses, if a rational utility analysis is undertaken, and if the principle underlying this comment is extended to the preamble, and that preambles be therefore considered as always limiting.

    Consistent. Easy. Applicant controls, based on simple rules, the application of which can be reasonably well performed in advance of submission.

    If it helps people to conceptualize this claim, it could be understood as a method of generating a signal (including the “wherein” clauses), with no use actually being made of that signal…and now we are back to Nuitjen…but the “wherein” clauses MUST be included, as per the express wishes of the applicant.

  67. Like everybody else, I got it through my own efforts, informed by various sources–but mine was guided by rigorous logic, and its limits are strictly framed by the statute. Analysis of decisions is predicated upon the application of both that rigorous logic and the conceptual statutory framework to judicial precedent.

    Logic of which I can show EACH STEP, and how it relates to steps immediately before and after, ALWAYS having at its one end the statute, and at its other end a definite disposition of a specific case.

    A big problem with the proliferation of rhetorical labels is that their definition, meaning, or derivation is not rigorously demonstrated, which is why no 2 people will have precisely the same understanding thereof.

    I understand that nothing is perfect–but these things are far too imprecise to be as prospectively useful as they should be.

  68. I am not sure that there is a workable rule of law in this decision that can be extended to other cases.

    In those circumstances effort spent on trying to distill waht is not there is effort wasted. I hope it is not too disrespectful to say that this is a decision which is correct on its own facts, but should not be taken as standing for much more.

  69. MM, the only logical outcome if it wouldn’t make any difference would be a registration system, since you paint a picture of complete anarchy within the examining corps.

    And to remind you once again, I find the disposition of the case to my liking–but the precise way in which it purports to have been achieved was in no way specifically “predictable”, as you suggest.

    The general system of obscurantism employed by the court was, of course, eminently predictable.

  70. Correction: “[It is my belief that] More than 2 have the same understanding. Mine.”

    There’s that ego raising its ugly head again, 6.

    BTW, this stuff is every bit as complicated, and can be infinitely more vexatious, unstable, and amorphous than so-called “rocket science”, about which I happen to know a thing or two.

    The fact that you try to minimize its difficulty tells me not about its substance, but about your own ability to even perceive the difficulties that obtain.

  71. Why is Funk Bros. a POS?  It has been consistently followed.

    I find it interesting that Funk Bros. did not cite Cochrane v. Badische Anilin & Soda Fabrik, 111 U.S. 293, 311–12 (1884), yet the result is the same. 

  72. the highest form of discourse

    cf

    GFY, sockie.

    W

    T

    F

    Right MM. More of what I expect from you. How does this relate to my views on the Prometheus case again? That’s correct, it doesn’t.

  73. sockie your keen insight meets the exceedingly low expectations I have for your posts.

    Because taking quotes out of context and writing “w t f” after them is the highest form of discourse.

    GFY, sockie.

  74. And where did you get YOUR understanding, Inviting Body Punches? From the PTO? From the courts?

  75. Last I checked I did not get my axx handed to me 9-0 because I failed to appreciate the issues “sockie.”

    In fact, I agree 100% with the outcome. Way to jump to conclusions. As usual, your keen insight meets the exceedingly low expectations I have for your posts.

  76. Ned, just like “configured.”physical aspect of the composition (e.g., the presence of oxygen) and determine whether the composition is infringing or not.

    On the other hand, a “robot configured to accept data from grandmothers” has no evident physical differences from any other robot.

    Thanks for playing, sockie. Wouldn’t you be happier sucking your thumb over at one of the Sad IP Blogs for the next couple weeks?

  77. last I checked, there is a world of difference between an issue dissolved, as in does not exist and a per se holding.

    Last time I checked you got your axx handed to you 9-0 because you failed to appreciate the issues. Nobody cares what you think, sockie.

    Mxrxn.

  78. in spite of what the dissembling rubes posting at

    The dissembling rubes like MM and Ned Heller posting here have so much more swagger.

  79. the 101 issues dissolve.

    cf

    Indeed they do. The claim is invalid per se instead of ineligible under 101

    W

    T

    F

    last I checked, there is a world of difference between an issue dissolved, as in does not exist and a per se holding.

    This isn’t even close to being logical.

  80. Part of me believes that CAFC and USSC patent decisions that involve issues of validity and S-M eligibility should be written specifically with examiners in mind

    LOL. You think that would make a difference? You’re talking about an examination corp which routinely pretends that the real world is irrelevant to the examination of computer-implemented methods after literally DECADES of being told that is improper.

    And the pxtxnt txxbxggers still complain!

    Instead of whining about the Supreme Court and their ongoing attempts to crush the Worst Patents Ever into dust, why not just recognize that it’s happening and steer your ship accordingly? It’s not like any of this wasn’t completely predictable, in spite of what the dissembling rubes posting at Gene Quinn’s and Kevin Noonan’s blogs would like you to believe.

  81. Anonexam314: Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)) that a “‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.

    Except the claims in Prometheus do not “simply express the intended result” of the recited process step.

    The wherein clauses only state facts.

    The wherein clause was interpreted as a step of thinking about the result.

    Once you don’t give the ‘wherein’ clauses patentable weight the 101 issues dissolve.

    Indeed they do. The claim is invalid per se instead of ineligible under 101. I’m still waiting for someone to explain what difference it makes whether [oldstep]+[newthought] claims are killed under 101, or 102/103, or held unenforceable per se.

  82. “Correction: you have been able to coach a few examiners through ‘your understanding’ of the 101 analysis prior to this decision.”

    You said no 2 have the same understanding. More than 2 have the same understanding. Mine.

    “And where did you get YOUR understanding, 6? ”

    From the decisions that aren’t exactly rocket science to read.

  83. Ned: But different considerations apply to things of nature. If they truly are natural phenomena, the first discoverer of the phenomena should not have the right to appropriate to himself that discovery.

    Agreed. If I claim a “A chromosome comprising sequence ATGCGGA, where A is modified by glycosylation and T is modified by a methylation” and someone proves that a chromosome comprising that sequence existed in nature prior to my priority date, then I should not get the claim.

    You need to recognize, Ned, that such proof is not necessarily easy to come by, given the fact that the chromosomes of every living thing are continually changing. Please try to remember this fact. It’s important. If you ignore it repeatedly, I will have to assume you are being dishonest.

    It should not be able to do it by adding to the mention of the discovery conventional activity previously engaged in by others.

    With respect to isolated nucleic acid compositions, please recognize that “isolated” is not a process step in a product-by-process claim but rather a structural description of the composition.

    That said, I would like to know where you propose to draw the line, Ned. For instance, pretty much every novel chemical composition is related to some “natural” compound. Are you suggesting that if I can show that the novel isolated chemical compound could be created from the “natural” compound using 100 old conventional steps, that my novel compound is ineligible under 101? What about 10 steps? Five steps? And once again: this applies when the non-isolated natural composition was discovered only AFTER I filed my application?? Really?

    Consider this also: human beings are “natural”. For purposes of your 101 analysis, is there a legal difference between a composition that was created by a human being 3000 years ago and a composition that was first discovered in the stomach of a walrus after my filing date?

    These are serious questions which I am asking only to illustrate the ridiculousness of your/ACLU’s legal theory for the 101 ineligibility of certain compositions.

  84. I would have examined the claim differently and not have given patentable weight to the ‘wherein’ clauses in this case.

    Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)) that a “‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.

    The only active method steps are the administering and the determining steps. The wherein clauses only state facts. You can than treat the claims under 102 or 103.

    Once you don’t give the ‘wherein’ clauses patentable weight the 101 issues dissolve.

  85. Correction: you have been able to coach a few examiners through ‘your understanding’ of the 101 analysis prior to this decision.

    I’m glad that they self-report a “proper” understanding, and that a “proper” understanding is what you understand to comport with your own.

    6, you seem like a decently bright guy. If you cannot see the absurdity in this, well then there’s nothing to be done on your end.

    And where did you get YOUR understanding, 6? From the PTO? That’s a good one–from where did they get THEIR understanding? From the courts?

    To be charitable, it’s the blind, leading the 2nd blind, leading the 3rd blind, and with the information you have just provided, leading the 4th blind.

    And that’s being charitable.

    Part of me believes that CAFC and USSC patent decisions that involve issues of validity and S-M eligibility should be written specifically with examiners in mind, which is why there should be a stepwise analysis that restricts itself in the first instance to the strict framework provided in 35 USC.

    They should let examiners know that 35 USC is to be used as a touchstone–but more than that, they should let examiners know exactly HOW that can be done.

    Examiners are the ones caught in the middle in situations like this. Future illegality and incompetence by examiners on 101 issues invoking Mayo will not be the fault of examiners–it should be visited squarely on the USSC.

  86. Fyi, Ned, that’s “Not MM” you are responding to.

    Funk Brothers is a worthless piece of shxt, by the way.

  87. JEB Not sure the same analysis should apply to “abstract ideas”.

    The same analysis should apply and, more importantly, it certainly does apply.

    Let’s walk through it again.

    Prometheus claim is of the form: [oldstep]+[newthought].

    It doesn’t matter if the [newthought] is a law of nature, a fact, a correlation, a poem, a melody, or an abstraction. Such a claim is effectively a claim to the ineligible subject matter because otherwise non-infringing actors (i.e., practitioners of the prior art old step) are turned into infringers merely because they have learned something new and think about it while practicing the prior art.

    As I noted for several years prior to this decision, such claims are either ineligible under 101, invalid under 102/103 (because the mental step must be ignored for such purposes), or unenforceable. It never much mattered to me which doctrine was used, but it mattered to the Supreme Court.

    Nine-zero. If you think Prometheus was only about “laws of nature” then you are an idxxt. It’s about claims in the form [oldstep]+[newthought]. Such claims are ineligible regardless of the nature of [newthought].

    Does anyone disagree? If so, I’d love to hear someone articulate why in a coherent matter that addresses the issue I raised above. Nobody was able to do so before Prometheus. Pretty pathetic to watch some of those same people now do somersaults pretending that this decision is somehow difficult to understand or implement.

  88. Not technically true, i havd been able to coach a few examiners through the 101 analysis prior to this decision. All of them report a proper understanding of the decision upon evaluation. But then i’ve only been able to hand train a handfull

  89. If they truly are natural phenomena, the first discoverer of the phenomena should not have the right to appropriate to himself that discovery

    Even any chemical found floating in the gonad cells of an Antarctic sea urchin?

  90. Einstein, mathematical equations and abstract ideas are not necessary laws of nature, although laws of nature might be expressed through mathematics. We need to keep in mind that there is a difference between the two.

    Laws of nature are in the public domain. The first discoverer of the law of nature cannot claim that subject matter as his exclusive property. He can claim a useful application of it, provided that that useful application is itself novel and nonobvious when considering that the law of nature is prior art.

    For more on this please see Funk Brothers.

  91. Exactly right.

    Laws of nature and things of nature have to be considered to be part of the prior art. Regardless of language to the contrary in Flook, and I think that this is the central problem in Flook, abstract ideas mathematical formulas are not necessarily laws of nature. Treating them as such is wrongheaded. The problem is not that abstract ideas are part of the prior art, it is rather that the patent laws require useful applications of general principles rather than patents directed to the uncabined principles per se.

    But different considerations apply to laws of nature and things of nature. If they truly are natural phenomena, the first discoverer of the phenomena should not have the right to appropriate to himself that discovery. It should not be able to do it by adding to the mention of the discovery conventional activity previously engaged in by others.

  92. Does this mean that I could have had a patent on aether after I should that it was not a law of nature after all?

  93. Of course it was fast–it has no original content. It merely parrots parts of the published opinion.

    It has no original content because the PTO has no idea precisely WHAT the court meant by any of it–”laws of nature”, “abstract”, “effectively”, “natural phenomena”, “sufficient”, and “significant”.

    No 2 examiners will have the same understanding of the content of this opinion.

    The confusion increases daily. Literally.

  94. “Laws of nature” are inherently already in the public domain

    No. This is a fallacy.

    For example, take one of my equations.

    My equation was not existing at the time I “discovered” it.

    My equation is not a “law” of nature, because it is not an actual fact. It is a man made (by me) emperical tool and a representation of how I believe nature to act.

    It is a map.

    A map is not the real world.

    There have been other maps on this very same territory.

    Those maps have been shown to be wrong. Did nature change? Did she rewrite her laws to make these other maps incorrect?

    No.

    This fact alone, when properly understood, would show to anyone with a quarter of my intellect that the maps I create are merely that: maps.

    Only the truly ignorant elevate that which they do not understand to some godly level and try to treat such as unassailable.

    While I enjoyed the spotlight from my efforts, I truly was concerned about the deification of those efforts. To read my name taken in vain by Justice Breyer just makes me spin.

  95. The memo isn’t as restrictive on subject matter as it likely could have been in light of the opinion. I think you are right that this is a first step and more will come after a final disposition of the Myriad case.

  96. That was fast.

    Not sure the same analysis should apply to “abstract ideas”. “Laws of nature” are inherently already in the public domain even if previously undiscovered, while that’s not always the case with unpatentable “abstract ideas”.

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