Guest Post by Michael Risch: America’s First Patents

Guest Post by Michael Risch, Associate Professor of Law, Villanova University School of Law

My forthcoming Florida Law Review article, America’s First Patents, examines every available patent issued during the first 50 years of patenting in the United States.  A full draft is accessible at this SSRN page. The article reaches three conclusions:

  1. Our patentable subject matter jurisprudence with respect to methods can, in part, blame its current unclarity on early decisions by a few important judges to import British law into the new patent system.
  2. Early patenting trends suggest that Congress has never intended new subject areas be limited until Congress explicitly allowed the new subject area.
  3. The machine-or-transformation test, which allows a method patent only if the process involves a machine or transforms matter, has no basis in historic patenting practices.

When the Federal Circuit first issued its en banc opinion in In re Bilski, I believed that its machine or transformation rule could not have been based on history. I wrote in my 2010 article Forward to the Past that:

in its effort to deal with high technology, the [Federal Circuit] abandoned low technology. There are many patented processes that have nothing to do with machines or transformations—methods for measuring fabric, methods for harvesting fruit, and methods for manufacturing products by hand (for example, forming wrought iron). At worst, these types of historically patentable inventions would now be unpatentable. At best, determining what is patentable and what is excluded became much more difficult.

However, I did not have any real proof to support this statement, so I thought I would test the assertion with some quasi-empirical evidence. I spent the summers of 2010 and 2011 working with several research assistants, and we read every available patent we could find, a total of about 2500 before 1836 (most of our pre-1836 patents were destroyed in an 1836 Patent Office fire), and 1200 between 1836 and 1839. The goal was, first, to categorize patents as methods and, second, to determine whether each method used a machine or transformed matter to a new thing.

This was no easy task. Many early patents were difficult to read, and not just because they were handwritten. At the time, inventors did not have to claim their subject matter. As a result, patents usually described how to make or do something, and nothing more. It was often difficult to tell whether the making or the thing made was purportedly inventive. Even after more inventors started using claims, patentees would claim the exclusive right to “manufacture product X by doing Y,” which still left matters unclear.

This difficulty leads to my first conclusion. While courts often talked about “principles” in early judicial opinions, quite often they were attempting to determine the “principle of the machine” to identify what was patented for infringement purposes. Even when courts mentioned that principles were not patentable, the statement was usually a side issue and “principles” meant very basic principles, like “motion.” Because principles were not patentable, courts attempted to construe the patent in a way that was not a principle. This, it seems, is contrary to how we do things under recent cases.

In reading this old history, I discovered something interesting (and I don’t claim to be the first person to discover it – merely the first to tie the content of old patents to support the conclusion). Specifically, early judges imported British law into interpretation of the American statute. This might seem reasonable, except that methods were not patentable in England until after 1840.  But methods were explicitly patentable (called “art” in the statute) in the U.S. Indeed, the very first patent covered a method of making pot and pearl ash. But Justice Story, who sat as a Circuit Justice in many patent cases, did not think methods should be patentable, and as such issued statements in many cases about what could not be patented – statements that have been repeated even until today. My article looks at these statements in detail, and shows how unclarity in early patents allowed the courts to perpetuate a (wrong) view that we must limit method patents in particular ways.

In the second part of the article, I discuss some general findings about the patents. Some were dangerous (lead paint and asbestos), some were ridiculous, and some were enduring. There were many business methods related to teaching , music, and exercise, and there was even a rudimentary software patent (on a Jacquard loom, though I know some think that this is not really software). This was an entertaining part of the article to write; it was interesting to see how industries developed through patents. However, there is one overriding theme: the patents started simple, grew more complex over time, and expanded to new subject matter over time. Further, very little of the subject matter that dominates today’s inventions—such as electronics, chemicals, and pharmaceuticals—was apparent in early patenting. My conclusion from this analysis is that the patent system was designed to handle new subject matter as it is invented, and that Congress never expected to step in and approve new subject matter over time.

The final part of the article examines the motivating issue: whether the machine or transformation test was historically used. Because patents from 1793-1836 were not examined by the Patent Office but those from 1836-1839 were, I could test whether inventors had a different view of this issue than patent examiners had. It turns out that the groups did not differ; the results are statistically the same before and after 1836.

And those results show that our first inventors did not limit methods to those that used machines or transformed matter. About 40% of the methods patents between 1790 and 1793 did not use a machine or transform matter.  These would all be invalid under the modern test. To be sure, the test was very good at identifying business methods—nearly all of the business methods fell into that 40%, so it is hard to fault the test for failing to identify early business methods.  Of course, today’s business methods do use machines, so I am not sure how accurate the test would be today.

However, there were many patents –many more than the business methods—that did not use a machine or transform matter.  This, to me, suggests that among the tests other failings, it has no real basis in past practice or understanding. While we can debate the merits of the recent Prometheus opinion, I applaud its rejection (again) of the machine or transformation test as a way to determine patentable subject matter.

This post presents the basic conclusions of my article. There is obviously much more in this 50 page paper than I can write here. I detail my methodology (and its limits), 19th century law, and the patents in the full paper.

221 thoughts on “Guest Post by Michael Risch: America’s First Patents

  1. Con Man,  Slow down.
     
    Congress did not, in 1790, define "invention," "discovery,"  "limited times," or "exclusive rights."  They left it in 1790 to the executive to define what an invention was (beyond machine, manufacture and Art).  But, in 1793, at the recommendation, some would believe, of Jefferson, the executive was removed from that role, leaving it entirely to the courts to define these terms through actual cases.
     
    They have been doing so ever since — an there is nothing at all unconstitutional about this, as the whole point of the courts is to intepret the constitution and laws. 
     

     

  2. The most important issue on the exceptions is whether they are from the constitution or not. If not, congress can overrule the SC.

    Doesn’t this miss the point?

    If the exceptions are not constitutional, they are illegal and congress shouldn’t have to overrule them. The Courts have no authority to make common-law patent law since the constitution expressly provide this power to congress.

  3. MM: “Show me where the Supreme Court understood the claim to cover performing a prior art step and THINKING about the result.

    Make my day, suckie.”

    Closing the mold.

    Constantly determining the temperature of the mold.

    Constantly re- calculating the appropriate cure time through the use of the formula and a digital computer.

    And yes, even if most of this was done by a computer, someone had to read the results and think a new thought.

    Now deal with that beach.

  4. “Better yet, please explain to me how a claim in that form is not effectively a claim to the new thought itself, at least from the perspective of a practitioner of the prior art.”

    Because there is no proof of a new thought until a physical act occurs.

    Physicals acts, with, or without machines or apparatus are no longer thoughts, they are acts.

    All actions require thoughts. The two can’t be separated.

    If you start dissecting thoughts , whether new or old, out of process claims you in effect dissect the steps that define patent eligible inventions.

    This is why you theory has never been upheld by any Court and never will be.

  5. What you are really arguing is that the Supreme Court in Prometheus held all process claims with mental steps patent ineligible. Yet you have no precedent to cite to prove your case.

  6. one of my “crackpot” “theories” is now The Law

    Repeat your lie often enough and you might even believe it. The 9-0 Prometheus decision had nothing to do with your rather banal theory. Law of nature is what Prometheus was about.

    What the H does per se ineligible under 112 even mean?

  7. Face it: you cannot have both of your crackpot theories!

    There is no reason that the Supreme Court can not hold both that (1) [oldstep]+[newthought] claims are ineligible under 101 because they are effectively claims to mental processes; and (2) funcitonally claimed instructions for computers are per se ineligible under 112.

    And please, let’s not forget: one of my “crackpot” “theories” is now The Law and the other is on its way.

    9-0.

  8. Quest declined

    Only a fool declines a path to enlightenment.

    Oh wait, this is 6.

    Nevermind.

  9. Ned is still critically off.

    The point of novelty is in the way the calculations (old in the art) were done: inherently it was by computer.

    You really should not venture forth opinions in art fields you do not know anyhting about. Your ignorance shines like a beacon.

  10. As I said, the computer in Diehr was not even claimed in one claim, and made no GD difference to the result. What means was used to do the calculation was not the point of the claim. The calculation, for Christ’s sake, used an old and very conventional algorithm. It was not new.

    It is important in trying to understanding cases and what they hold and stand for, to understand their facts.

    Critically important, I might add.

    Just how this case even got to the Supreme Court is a wonder because its patentability had nothing to do with a programmed computer. A bona fide Section 101 issue was not involved in the case at all except if one were trying to misconstrue Flook.

  11. using this temperature to update

    And what pray tell “uses” this? Hint: the programmed computer.

  12. Try to focus MM and realize what you give up by depending on Diehr (that’s right, software on a computer = new machine).

    Face it: you cannot have both of your crackpot theories!

  13. and you’d need the software to actually do something

    The other half of the brain trust (6) says software never does anything.

    One bankrupt trust…

    The Supreme Court in Prometheus had seen Diehr. Didn’t do Prometheus any good

    Take your shot and square Prometheus with the precedents it says it follows (don’t worry, no one else has actually done this yet either).

    What’s more, Diehr didn’t claim a “new machine”, Diehr claimed a process.

    What’s a post from IANAE without a little straw? Process requires MOT, right? What was the new machine? (answer: none) What was the new transformation? (answer: none)

  14. A list of chores for 6:

    1) Define “particular” machine.

    2) Explain why this definition is not used in all other cases outside of computer machines.

    3) Explain what was meant by “I have never said that a given method of using a computer does not involve a machine.”

    4) Realize what “component” means (both factually and legally; hint, understand Alappat).

    5) Realize what “in action” means and understand that software if not passice, is structure, if passive, is method.

    6) Stop drinking so much Koolaid.

  15. Diehr, I think you confuse apparatus and process.

    A process is independent of the apparatus. All it requires is that a series of acts be performed to produce a new and useful result.

    In Diehr, what was NEW was the constant monitoring of temperature INSIDE the mold, and using this temperature to update the time to open the mold using a preexisting formula.

    It made no difference to the result in Diehr whether the means of calculation was a human using his brain, pen and paper, an abacus, an analog circuit, or a programmed computer. None at all. The computer was not even claimed in the broader claim. All that was required was that the time to open the mold be updated.

    Regarding Alappat, the hardware disclosed and claimed was not a programmed computer. It was a specific digital hardware circuit, a specific computer if you would. It was not a programmed general purpose digital computer. Furthermore, it was claimed, not per se, but as part of a graphics display.

    Assuming arguendo the special purpose hardware could be replaced with a programmed computer, the Federal Circuit held that the result would not be changed because of the specific tie-in to the graphics display.

    What Alappat did not hold was that a programmed computer simply calculating number without any use for the numbers could be patented as a new machine because those were not the facts of the case, even hypothetically.

  16. More misdirection. And how did the Court treat that “wherein clause?”

    The wherein clause was treated by the court as a step of thinking about the result obtained by the old, conventional process.

    This was a matter of claim construction and was not disputed by the parties. Prometheus’ expert testified that, following the old conventional step of measuring metabolite levels, literal infringement could be found merely by looking at the measurement and thinking about the correlation.

    This fact has been discussed here scores of times and your feigned ignorance of this fact is disgusting.

  17. “It’s a machine, right? ”

    Mhmm a computer is a machine, but is it a particular machine? Nah, not really. And is the MOT the lawl by which we determine elibility? Nah. It isn’t. Indeed, we just saw a USSC case where the MOT dictates patentability and yet the claim was held ineligible.

    “t’s a machine component, right? ”

    Nah.

    “In action, it’s a method, right?”

    Software “in action”? Software is never “in action”. Software has never performed an “action” in the history of mankind. Software is nothing but a bunch of instructions, they are passive, not active. But, even if it was, what of it?

  18. A patent can issue with ONLY old steps.

    Try to stay on topic, suckie.

    We’re talking about claims in the form [oldstep]+[newthought] and why they are ineligible for patenting.

  19. Either software makes a new machine (and Alappat rules) or, you have an old machine and a “new thought” being patent eligible.

    Try to focus, suckie. We’re talking about why claims in the form [oldstep]+[newthought} are not patent eligible, and why. Whether software creates a new machine or not is utterly irrelevant to this question.

    But I understand why you would want to try to change the subject, suckie. You do that a lot when you’re flailing. And flailing is all you have left to do now.

    9-0.

  20. suckie Been there, done that. See Diehr.

    Incorrect. Diehr is not a claim in the form [oldstep]+[newthought], suckie. I’m curious as to why you think the claim in Diehr fits the format. I suggest you reproduce the claim here for everyone to see and explain exactly where the mental step is in the claim and how it relates to the other steps.

    Unless you’re afraid to do that, suckie. I could understand why that might be the case. But go ahead, suckie. Make my day.

  21. Either software makes a new machine (and Alappat rules) or, you have an old machine and a “new thought” being patent eligible.

    Or software is not per se eligible, and you’d need the software to actually do something eligible. Like in Diehr.

    See Diehr.

    The Supreme Court in Prometheus had seen Diehr. Didn’t do Prometheus any good.

    What’s more, Diehr didn’t claim a “new machine”, Diehr claimed a process. The step of opening the press based on the comparison was a new physical/transformative step.

  22. Conundrum for MM

    Either software makes a new machine (and Alappat rules) or, you have an old machine and a “new thought” being patent eligible.

    See Diehr. Remember that in Diehr there was no new physical components. The only thing that was new was the programming for the computer.

  23. Logic FAIL.

    A patent can issue with ONLY old steps.

    Does this make anyone practicing one old step and then combining that with another old step an infringer without even thinking ANY thoughts?

    Your strawman example of a single old step is worthless.

    T O O L

  24. go ahead and file some claims in the form [oldstep]+[newthought] and see what happens. Go ahead, suckie. Make my day. Better yet, please explain to me how a claim in that form is not effectively a claim to the new thought itself, at least from the perspective of a practitioner of the prior art. You’ll be the first to achieve that intellectual feat, suckie. Go ahead. Make my day.

    Been there, done that. See Diehr.

  25. Let’s see MM actually use law and reason

    Here it is, written at a pre-school level so suckie can understand (I’ve posted the argument dozens of times at a kindergarten level for suckie — evidently still too complicated!).

    The law: you can’t get a patent on a mental process

    The claim: [oldstep]+[newthought]

    The analaysis: from the perspective of a practioner of the prior art (potentially a huge number of people, depending on old step), the claim is effectively a claim to the new thought itself. The reason that the claim is effectively a claim to the new thought itself is that the otherwise non-infringing actor who is freely and legally practicing the prior art need only think the new thought in order to become liable for literal infringement. In order to avoid literal infringement, the otherwise non-infringing practitioner of the prior art must avoid learning new facts. Because such claims have the effect of turning a mental step into an illegal act (at least with respect to those who are otherwise engaging in perfectly legal acts), they are obviously ineligible for patenting.

    9-0.

    Now watch suckie dissemble. It’s not going to be pretty.

  26. Diehrs claim is [oldstep]+[newthought]

    Show me where the Supreme Court understood the claim to cover performing a prior art step and THINKING about the result.

    Make my day, suckie.

    “ALL claims in the form [oldstep]+[newthought] are ineligible for patenting”

    This can’t be true

    It is true. If you don’t believe me, go ahead and file some claims in the form [oldstep]+[newthought] and see what happens. Go ahead, suckie. Make my day. Better yet, please explain to me how a claim in that form is not effectively a claim to the new thought itself, at least from the perspective of a practitioner of the prior art. You’ll be the first to achieve that intellectual feat, suckie. Go ahead. Make my day.

  27. Much more than just a means plus issue in Alappat.

    New machine…, component to a new machine…, drink it in new friend.

  28. I thought Alappat had to do with means plus function language? Remind me, was there a B claim at issue in Alappat?

    You softwaretardtrolls need to keep your subjects straight.

  29. “total appeal process defeats. ”

    I have no “appeal process defeats”. My spe has desired to reopen some cases and has done so. I however take no responsibility for his actions.

    I do however claim to have jumped on the bandwagon on his proposed alternate rejection in one of the wins at the board. Although I may have been the one that thought up that grounds of rejection initially anyway. Who remembers?

  30. Your old computer isn’t going to save you from a nice lil ol’ 101.

    It’s a machine, right? Your statements are in direct conflict.

    Software is notably not a method.

    It’s a machine component, right? In action, it’s a method, right?

  31. “software + computer = patentable, per 6.”

    Idk who told you that bro. Your old computer isn’t going to save you from a nice lil ol’ 101.

    Software is notably not a method.

  32. Sort of like you, suckie, except you’re just a sychophant.

    syc·o·phant/ˈsikəfənt/
    Noun:
    A person who acts obsequiously toward someone in order to gain advantage; a servile flatterer.

    English FAIL

  33. software + computer = patentable, per 6.

    As I said, welcome to the club.

  34. 6 has never spent a day in the real world. That’s why he doesn’t know what business methods are.

  35. “However, they are both clearly directed toward manufacturing; they are not business methods, and they are not abstract.”

    Just for the record.

    Manufacturing methods ARE business methods.

    Business methods are not abstract.

  36. Finally, a method of using a computer, aka a machine, to _______ does not involve a machine.

    Rampant incompetence.

    lolz

  37. A little further commentary.

    “Examples of non-machine and non-transformative patents might be helpful. The first clear example is X168, to Isaac Garretson on May 29, 1797, which described a method for manufacturing boats using tubes. The next is also a method of constructing boats, No. X449, to William Hopkins on May 13, 1803. The patent describes how to heat wood with steam so that the wood bends without breaking, a method still used today. The third is No. X617, to Ebenezer Lester on May 10, 1805, describes a method of making molds for cast iron screws by making imprints in sand using a wooden model of the screw. The patent is for the molds, not the screws, and
    thus nothing is transformed. The fourth is No. X856, to Roswell Pitkin on April 23, 1808. This patent describes how to prepare fabric by pressing on it with rollers or plates.”

    Apparently in Michael’s world, building a ship, presumptively from “nothing” or “parts” does not involve a transformation.

    Also, heating wood with steam so that it is transformed into a maleable steamed piece of wood does not involve a transformation.

    Additionally, making a device, presumptively from parts, does not involve a transformation because the patent is for making a mold, not making screws.

    Finally, a method of using a roller, aka a machine, to press fabric does not involve a machine.

    Rampant incompetence.

    “Patent Nos. X5532232 and X5547,233 both discussed above as relating to
    making combs from scrap parts and decorating combs, are examples of nontransformative
    methods.”

    A method of making a COMB from SCRAP parts doesn’t involve a transformation. REALLY? So, you had SCRAP, and then you had a COMB. By magic? Or by transformation?

    “However, they are both clearly directed toward manufacturing; they are not business methods, and they are not abstract.”

    Right, so they’re both directed to “manufacturing” aka transforming objects into other objects, but amazingly they don’t involve a transformation.

    That is all the facepalming I can take for today.

  38. You can spin and deny all you want

    MM talking about the Bilski decision?

    That’s the decision that sent MM on a two month absence from posting, his “Diehrbots will die” prediction coming up woefully short.

    Try again.

  39. The section Ned references is dicta to a side issue in Golan, an issue presented in the alternate.

    It has nothing to do with the holding of Golan.

    Try again.

  40. “ALL claims in the form [oldstep]+[newthought] are ineligible for patenting”

    This can’t be true because Diehrs claim is [oldstep]+[newthought] and it was eligible for patenting. And the Promtheus Court affirmed that with the discussion on integration..

    The fact that MM or Ned will not face this fact shows their intellectual dishonesty and outright disregard for patent law that dies not advance their agenda.

  41. “What statute?”

    “”The one that has medical methods in it.””

    LOL!

    Next Ned will say , “what is a statute?”

    oh I mean, he will” What is a medical method?”

    Or ..he will “What is a business method?”

    Oh ..well..one thing for certain .whatever Ned says next, if anything , it won’t be the truth.

  42. The question remains, why is the Court meddling?

    Of course the question remains. And of course the answer as supplied by Golan is being swamped in misdirection and minutia by Ned.

    There is a clear dichotomy between patents and copyright, and elephant in the room. Once teh Supremes have lost their hold on granting rights to something in the public domain (for ANY reason), their constitutional plank of prohibiting whole categories of patent eligibility resting on that plank falls to shambles.

  43. Ned’s answer is not an answer.

    Once again, he skirts the direct issue in front of him, instead only focusing on Golan.

    Wouldn’t it be wonderful if Ned actually answered a direct question with a direct answer?

    Let’s give him another shot.

    The direct question: How do you know this would frustrate the purpose?

    The direct answer (sans assumptions): [Ned, this is your chance to be honest and forthcoming].

  44. And yet another misdirection from Ned.

    Clear Illegality was talking avout indications in Golan and Ned answers that there was dicta in Graham.

    Oh, how Ned loves dicta when he thinks it supports his agenda, trucking in dicta from one case into a discussion of another case.

  45. I now know that Malcolm fully agrees with ‘integration.’

    Show one instance, ONE, that Malcolm has EVER agreed with integration.

    I will not be holding my breadth.

  46. I>Even so, the thought we are talking about is expressed in the ‘wherein clause.’ ”

    More misdirection. And how did the Court treat that “wherein clause?”

  47. “Prometheus, from Malcolm’s posts in this thread, I now know that Malcolm fully agrees with “integration.”

    Ned, he is talking about dissection. Dissection is the antithesis of integration.

    If you were honest you would concede this point and move on.

  48. Regarding a SC holding that we disagree with, if the disagreement is statutory, we can amend the statute.  If the disagreement is with the constitution, we can only amend the constitution.

    That all I had to say.

    The most important issue on the exceptions is whether they are from the constitution or not.  If not, congress can overrule the SC.

  49. anon, the Golan opinion cited the footnote in Eldred to explain its meaning.  Take a look at the Eldred reference in Golan below.  It refers to fn. 7.

    "In Graham, we stated that "Congress may not authorize the issuance of patents whose effects are to remove existent knowledge from the public domain, or to restrict free access to materials already available." Id., at 6, 86 S.Ct. 684; post, at 907. But as we explained in Eldred, this passage did not speak to the constitutional limits on Congress' copyright and patent authority. Rather, it "addressed an invention's very eligibility for patent protection." 537 U.S., at 202, n. 7, 123 S.Ct. 769."

  50. "New use" of a "know process."

    I think he does draw the distinction in that the old process actually is not used in any new way.  It output is not applied to any new use.

  51. And kudos to A New Light, whose post has had my mind at hypergear on this topic, and reminds me that it is the simplest and often unchallenged assumptions that can serve as the fulcrum of truly monumental changes.

    I am reminded of Archemides quote: “Give me a lever long enough and a fulcrum on which to place it, and I shall move the world.”

  52. “Feet, the wherein clause is informational.”

    That is not the answer to the question. Now either answer it or admit you can’t answer it.

    Again, can you put the thought(s) you are ignoring, dissecting and/or not counting, in written form?

  53. Ned,

    re: 2. at 6:30 PM, Read Golan for Golan. Your reach to a footnote in a separate case is simply a reach too far.

    re: 1. at 6:30 PM, As far as any “protest” to Golan, I do not understand your comment. Please restate.

    Golan’s holding is clear and unto itself. I do not think that you grasp it yet.

  54. “Regarding your point that Malcolm’s theory require dissection and violate the statute,”

    Again, Ned all process claims are going to require thoughts, new or old, in order to be applied, especially, a new use of a known process.

    U.S.C Title 35 §100(b) al- ready explicitly defines “process.

    (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.

    MM’s pet theory that you so foolishly and shamefully shill for would violate the statute.

  55. Feet, the wherein clause is informational.  The theory of infringement informs the claim.  I and Malcolm have discussed that before.  Doctors infringe by conducting the prior art admin and test because they know of the new limits.

  56. Ned, once again you have not identified any “thought(s)”.

    Just saying the thought is expressed in the wherein clause, does not actually show any thought(s).

    Can you put the thought(s) you are ignoring, dissecting and/or not counting, in written form?

    Then explain to why you are ignoring, dissecting and/or not counting the thought(s)?

  57. 1. Regarding Golan, you protest, I think, that the Supreme Court was wrong to limit the broad sweep of the statutes because the constitution did not require such a limitation and congress is in charge of policy.  However, where do to you appeal if they are wrong and so no inclination to change course? Yes, we have to convince congress to overrule the SC, or if necessary, to amend the constitution.   Congress can pass laws overruling the SC if it has the power to do so.

    2. Regarding Golan's holding, I urge you to read fn. 7 in Eldred to which Golan refers.  The the SC made clear that extending patents, even after they had expired, was entirely different from what Graham said about withdrawing knowledge from the public domain.

    Golan does not stand for the proposition, therefore, that Congress has the power to withdraw knowledge from the public domain outside the context of extending patent term.

        

  58. Your post is beyond funny.  It cannot be taken seriously.

    Even so, the thought we are talking about is expressed in the "wherein clause."

    Did you seriously, for even a moment, think this discussion concerned anything else?

  59. Let's make it clear that your pull quote (Ned….) is me quoting another and is not my statement.  The response to that statement is my statement.

    Regarding your point that Malcolm's theory require dissection and violate the statute,

    What statute?

  60. Ned, the key point is that you have “again” merely done what needs to be questioned, that is, you have made a naked assertion and assumed that what you assert must be true.

    To wit: “To construe 101 to allow patents on principles in the abstract would not promote progress in the useful arts as stated. Rather, it would frustrate that purpose

    How do you know this would frustrate the purpose?

    The answer is you don’t.

    The answer is that you can’t.

    It’s a future projecting, subjective and unknowable statement.

    In fact, a comparison has been put forth to the very nature of exclusivity on inventions themselves. Do inventions frustrate the purpose of promoting progress? Even with the limited time of exclusivity, progress is not frustrated – at any point in time including the time of exclusivity. The reason by the Suprmes needs to be questioned and not assumed to be true.

    Quite clearly, this can be seen in your use of Graham and contrast that with Golan. In Golan the Supremes draw the distinction between withdrawing something from the public domain and quite clearly state – in holding – that such can be done because there are other ways that satisfy the purpose of promoting progress.

    It is critical, absolutely critical to understand exactly what the Supremes have sacrificed in Golan. They have sacrificed the tie-in of withdrawing something from the public domain to the only power they have – that of a constitutional question. In Golan they made it a nonconstitutional question and one fully under the authority of Congress to decide.

    Now whether or not they realized the extent of what they did might be discussed. But the fact that they have done what they have done is not open to debate.

    I still think the better perspective, the more interesting perspective, is that the Supreme Court has acted unconstitutionally in creating laws that are in addition to the laws created by the Congress when the constitution clearly sets who has that authority. The Court engages in doublespeak when it notes the “wide open gates” and then makes law to narrow those same wide gates. It simply does not have the authority to baldly assert an unproven – and unprovable – future subjective view as a foundational reason to change what Congress,in their full – and fully owned – authority can, and has done.

    My take.

  61. Excuse me but nothing you said above makes any sense.

    Your post is lacking anything concrete, tangible, and substantive to even be discussed and debated.

    For example, you say, “Macolm’s formulation, the key is that the thought is not “applied” to the process to modify it in any way”. Then you conclude,

    the process of Prometheus is nothing more than ”

    1. administer; and
    2. test”

    Okay, even if that w’ere true what “thought” are you talking about exactly?

    To administer or administering is an act that requires thought.

    To test or testing is an act that requires thought.

    So if you two are talking about dissecting, ignoring, or not counting “thoughts” you better dam well be able to identify the thought and explain why it’s not being counted.

    Oh, and yes, reconcile that with the statute.

  62. Tricks, “Ned all process claims are going to require thoughts, new or old, in order to be applied, especially, a new use of a known process.”

    Whether this statement is true is beside the point. ”

    The point made is that MM’s dissection of mental steps theory would violate the statute, which the above fact demonstrates.

    Do you deny this and if so why?

  63. Anon, I see your post and here, in part, is my answer.  

    The Supremes have been interpreting the words of what is now Section 101 since the first patent statutes.  They have been interpreting to be consistent with the purpose of Art. I, Section 8, and with the limits imposed by that section about "exclusive rights" and "limited times."  The section calls for the promotion of progress, and the reward is to inventors and discoverers.

    Thus, we get to Morse, for example.  To construe 101 to allow patents on principles in the abstract would not promote progress in the useful arts as stated.  Rather, it would frustrate that purpose.

    In discussing "invention" in Graham, the court did the same thing.  To withdraw knowledge from the public domain would be harmful to the purpose of promoting progress.  

    Ditto all the exceptions.

    To date, Congress has not sought to defy the Supreme Court.  Therefor, we have no real test of congressional power.

    My take.

  64. Indication?  Yes there is an indication, albeit, not a holding.  That is the dicta in Graham to the effect that Congress did not have the power, mark that, to authorize the withdrawn of "information," mark that, from the public domain, excluding that which was originally placed there by the inventor or author.

  65. I think,

    One needs to consider the infringement theories propounded.  They say that once a doctor or patient knows of the correlations (by reading them, for example, in the medical literature), they infringe every time they order a test for the metabolite levels.  They infringe even if they do not change the dosage in response.

    The problem with this is that doctors have historically been ordering tests for metabolite levels for this drug and this kind of disorder.  These same doctors, who are doing no more than what they have been historically doing are now infringers.

    How can this be?  How can one doing what he has always done be changed from an non infringing doctor into an infringing doctor simply by knowing something?

    Therein lies the basis problem.

    What has happened here is that one has made knowledge of the correlations alone to be the critical link to infringement.  Once that knowledge is transmitted, the doctor can no longer practice non infringing medicine.

    We have the same problem with patenting sexually reproduced plants and animals.  Throw the patented fish into a pond of an innocent fisherman, and soon all the fish in the pond have the patented characteristic or gene.  What did the fisherman do?  Nothing.  Yet he is now in infringer?

    Next consider the patented seed.  It spreads across the land naturally.  Once exposed to the environment, every farmer surrounding the field of the planted variety will soon infringe because pollen will spread the plant naturally.

    Now, how can this be?

    When congress authorized patents on sexually reproduced plants, they recognized this very problem and stated in the law that keeping and planting seed was not an infringement.  But the Federal Circuit now has gone and held that any planting is an infringement.

    Ridiculous, even as congress recognized.

    Talk about ignoring reality, ignoring congress and taking the law into one's on hands, the Federal Circuit have run amock!

  66. I am aware of the connotations tard, which is why

    English language FAIL

    turned it around on you

    S_ockpuppet Conspiracy Theory assumption FAIL

    Enjoy your view of the corner, from the corner.

  67. “Having pre-conceived notions has ZERO correlation with actual knowledge.”

    Only under your pre-concieved notion of what pre-conceived notions means. I am aware of the connotations tard, which is why I turned it around on you and used quotes.

  68. Tricks, "Ned all process claims are going to require thoughts, new or old, in order to be applied, especially, a new use of a known process."

    Whether this statement is true is beside the point, as in Macolm's formulation, the key is that the thought is not "applied" to the process to modify it in any way.  The process of Prometheus is
     
    1. administer; and
    2. test
     
    The thought "uses" the data from the above, which is entirely old, as an input to a mental process.  The only thing new in that process are the correlations.  The correlations are published in the patent, and may be published in medical literature as well.  They are information available to all. 
     
    Then the claim ends.
     
    Nothing is done with the result of the mental process.
     

     

  69. “And, there is no doubt that information processing methods have structure.”

    We have discussed this at length NWPA, and it will be easier for the good reader to understand you if you simply tack on “lol” on the end of “structure”, so that he knows you’re not talking about actual structure, but rather, a metaphorical or metaphysical “structurelol”. As in, it has an arrangement, not a physical structure.

    “The fact is that changing the information requires space, time, and energy. The fact is that information processing methods and machines as specified in the patents we often discuss on this board have structure and to one skilled in the art of computer science (of which I am certainly one), the structure of the method is very clear.”

    Although even your highness cannot enunciate to us what that structure is. It’s like a vision of Jes us, it’s very clear, but you can’t really tell us what it really was other than just to say “it was a vision”.

    “I knon exactly what set of implementations are possible and what is meant by the claims.”

    Really? Well then why don’t you try putting them in a dependent claim and see if it gets allowed? Oh, you don’t? You don’t even put it in the app? Hmmm, see, that’s what makes us a little hesitant to believe you.

    “I think this was a fact finding by the SCOTUS that was outside thier constitutional authority.”

    Scotus is constitutionally limited in their fact finding? NWPA bro, you need to lay down for a bit.

  70. You are confused as usual.

    Having pre-conceived notions has ZERO correlation with actual knowledge.

    Quite in fact, pre-conceived notions get in the way of acquiring actual knowledge. I don’t expect you to know that.

  71. “6, you have not been paying attention to what the Court has said about us patent bar folk and our ability to scribe a claim into any category. In essence, you make a distinction without a difference.”

    Tell it to the court when infringement time comes around.

    “pre-conceived notions”

    You mean, I actually know a lil something something about how our lawl evolved? Yeah, I guess they are “pre-conceived”.

  72. Hey guys, btw, got my 2nd appeal back the other day, chalk another one up in the ol’ affirmed category.

    You’ve been an examiner for how long now?

    To put your “prowess” into perspective, let’s compare your two appeal victories against your total appeal process defeats. How many pre-appeal conferences have gone against you? How many times have you re-opened prosecution?

    Let’s hear the rest of the story.

  73. doesn’t even understand the difference between a product and a method claim. These two claims do not “as a practical matter” exclude the same thing

    6, you have not been paying attention to what the Court has said about us patent bar folk and our ability to scribe a claim into any category. In essence, you make a distinction without a difference.

    Fraking courts just making decisions without regard to the ramifications thereof.

    Perhaps. And perhaps not in the way you meant this comment to support.

    Well, kudos on at least attempting to read the article prir to commenting on this go-around, even if you are reading with the blinders of pre-conceived notions. It’s a step in the right direction.

  74. Out of morbid curiousity, I wonder how Ned feels about this, as both of his erstwhile comrades in arms have taken a position against Ned’s amended MOT philosophy.

    I personally feel that MOT was simply too glorified as an examination tool. As Prof. Risch unmistakenably notes (and not with some bewilderment as to how history-minded Ned has continued to fail to note), what has historically been considered patent eligible is a greater set of things than what MOT provides a clue for.

    Moving the discussion to where I would like to see it focused, there is a conflation not only of our own law, but of foreign law – and ideals under that foreign law – when the legal discussion is upon eligibility.

    Efforts to correct the system – to understand the system – would include a root cause analysis (5 why) that would reveal and should eliminate these extraneous biases. Careful thought leads one to question the Court’s decisions and the reasons why they made those decisions and not blindly accept naked conjecture. “Constraining progress” has become a boogeyman to scare against patents, and this scare has never been critically evaluated at its basic premise.

    Theoretically, the fact that we believe (although it is understood that many do not so believe) that patents are a good thing because they do work to promote progress.

    Separating the anti-patent bias, or at least recognixzing and constraining that bias is a requirement for an objective understanding of the law, the premises for the law, and a way forward out of the morass that has become of 101 due to the Court’s “meddling.”

    Understand that the patent system works to promote progress. Understand the counter-intuitive notion that exclusive rights rewards not only the individual, but rewards society at large (in an Adam Smith great hand way). That understanding should quell the fear of the boogeyman. Creating gates to entry into the system goes against having the system. A system that works for its intended purposes.

    That understanding my also reveal that perhaps having the Court’s non-legislative gate mechanisms become dead-letters is not a bad thing after all. An automatic, but-we’ve-done-it-this-way rationale – without more – should be a warning sign. The Court delights in chiding the CAFC when the CAFC becomes “automatic” (e.g., eBay), and yet that is the same path the Court allows itself to fall into with its we-can’t-allow-one-of-OUR-judicial-exceptions-to-become-a-dead-letter reasoning. Reasoning to save their mechanism is not reasoning to serve the end result that the mechanism was created to serve.

    The Court has taken its eye off the prize and has fallen in love with its own history. Its time to take a critical and searing look at that history, to take a critical look at the assumptions behind the Court’s actions, and if that entails making the Court-made mechanisms a dead-letter, the gains may quite likely outweigh the loss.

  75. “I can’t cite ANY Court case that holds that “all claims in the form “A method of breathing, comprising (1) breathing and (2) thinking [new thought]“. And yet I can assure you that such claims are ineligible for patenting.”

    No actual claim + no citation = MM is FOS.

  76. See, e.g., where the claims at issue were in the form [old physical step]+[newthought] and were found ineligible.

    You mean Diehr right?

    But those claims which had old physical steps and a new thought were found eligible.

    Now gee whiz, how do you explain that?

    :: Babooon Silence::

  77. By the way, the method in Deener could be carried out by the human body. So, how does that fit in with the mental steps?

    You see there is something sick about the way the law is looking at mental steps because they aren’t recognizing that information processing is work just as real as processing grain.

  78. Michael,

    The difference between litigation and scholarship is that in scholarship one does not care what they want the outcome to be, but rather what the outcome should be. From what I have studied, structure is the key to understanding an invention. Two or more twigs cobbled together provide a human being with the opportunity to invent.

    And, there is no doubt that information processing methods have structure. You see, you may think I pick on minor points, and perhaps you are genuine, but these minor points are actually the keystones of patent law. And, I have had enough arguments and read enough papers to know the few false premises that the anti-information processing methods/machine birthers try to use. The fact is that information is as fundamental a property as mass. The fact is that changing the information requires space, time, and energy. The fact is that information processing methods and machines as specified in the patents we often discuss on this board have structure and to one skilled in the art of computer science (of which I am certainly one), the structure of the method is very clear. I knon exactly what set of implementations are possible and what is meant by the claims. These claims are in now way abstract, they in no way lack structure, and they in no way are not inventions.

    Another intentional false premise is the method of the machine. In Deener the SCOTUS had no problem with a method and recognized that the reason you need to be able to claim methods is that it is too easy to rearragne a machine. Too difficult to claim a machine that captures an invention when the method is really the invention and it can be carried out in almost an infinite number of ways with different machines. All of this got fouled up, when some did not want computer programs to be patented. Go back and read and re-read Deener. In conflict, with this method is the invention are two things: (1) that the SCOTUS arrogated to itself the idea that they would not allow someone to claim the invention of the method as they wanted to encourage people to find new machine implementations of the method. I think this was a fact finding by the SCOTUS that was outside thier constitutional authority. (2) The concept that one can claim a method more than one has invented. This is really a scope problem.

  79. Ned,

    You ask me what I think.

    I think that directing our energies to the right questions would be a greater benefit to the patent system.

    There is clearly a basic assumption that has been questioned. Let’s focus on that basic assumption. See my post at 8:43 AM above.

  80. “As if being sued unsuccessfully for thinking a new thought is somehow not that bad.”

    Anyone can be sued for anything.

    So what’s your point?

    Adopting a policy for dissecting the mental steps out of claims to eliminate a broad swath of patents is gonna prevent frivolous law suits?

    MTBHTDT Indeed!!!!

  81. MM “What everyone also knows now (and I knew before) is that tacking on a prior conventional old step to that new thought can not turn such an ineligible claim into an eligible claim, for every obvious reasons. 9-0.”

    You are merely describing post solution activity. It has been known since at least Benson, Flook and Diehr that post solution activity does not make a claim patent eligible. Apparently “Everyone” knew this but you.

    Now we know from Prometheus that if it can established that the entire process cannot be completed in one’s mind, and especially if any technical aspects are fully integrated into the claim, the claim is patent eligible.
    The Court believed wrongly ,or rightly that the Prometheus claimed failed this analysis. But, make no mistake, “integration” is the 101 gloss from the Prometheus ruling, not any tests or dissection of mental steps .

    Now you can read the citation below and face facts, or you can put your hands over your eyes and run around shouting GFY S uckie as usual. The choice is yours.

    _________

    “12 MAYO COLLABORATIVE SERVICES v. PROMETHEUS LABORATORIES, INC. Citing Diehr
    The Court pointed out that the basic mathematical equation, like a law of nature, was not patentable. But it found the overall process patent eligible because of the way the additional steps of the process integrated the equation into the process as a whole.

    Those steps included “installing rubber in a press, closing the mold, constantly determining the temperature of the mold, constantly re- calculating the appropriate cure time through the use of the formula and a digital computer, and automatically opening the press at the proper time.” Id., at 187. It nowhere suggested that all these steps, or at least the combination of those steps, were in context obvious, al­ ready in use, or purely conventional. And so the patentees did not “seek to pre-empt the use of [the] equation,” but sought “only to foreclose from others the use of that equa­ tion in conjunction with all of the other steps in their claimed process.” Ibid. These other steps apparently added to the formula something that in terms of patent law’s objectives had significance—they transformed the process into an inventive application of the formula.”

  82. 6:

    They’re not limitations at all brosensky, they’re simply the court noting what the effect the recitation of a transformation has on the scope of the claim for the purpose of performing their current analysis which is NOT THE MOT. They are, in point of fact, pointing out a situation where the MOT might reach a different conclusion to the preemption analsis they are performing. They’re telling us specifically that there is a transformation, and thus it may well pass the MOT, but the claim is an attempt to patent the law of nature, and thus ineligible. That is not limiting a transformation, or what is considered to be a transformation what so ever.

    Yup.

  83. no one has ever, or could ever be successfully sued for merely thinking a new thought.

    That’s because claims that recite only the thinking of a new thought are patent ineligible and everyone knows it. What everyone also knows now (and I knew before) is that tacking on a prior conventional old step to that new thought can not turn such an ineligible claim into an eligible claim, for every obvious reasons. 9-0.

    Also, how awesome that you tossed in the word “successfully”. As if being sued unsuccessfully for thinking a new thought is somehow not that bad.

    MTBHTDT

  84. suckie:

    But as we know, you have not, and cannot cite the holding of ANY Court case that holds “all claims in the form [oldstep]+[newthought] are ineligible for patenting.”

    I can’t cite ANY Court case that holds that “all claims in the form “A method of breathing, comprising (1) breathing and (2) thinking [new thought]“. And yet I can assure you that such claims are ineligible for patenting.

    Do you disagree with that conclusion, suckie? Let me know, and explain your answer.

  85. physical acts in combination with mental processes are patent eligible.

    Uh, no, cretainly not as a per se matter. See, e.g., where the claims at issue were in the form [old physical step]+[newthought] and were found ineligible.

    9-0.

    MTBHTDT

  86. “We called this, and patents like it, a
    “machine that does it” patent”

    What you should have called it was a patent wherein the drafter was a tard.

  87. Here’s a good quote for NWPA from the Corning decision:

    “But it is well settled that a man cannot have a patent for the function or abstract effect of a machine, but only for the machine which produces it.”

  88. “Examination of the first fifty years of patents shows that forty percent of patented processes would have failed the machine-or-transformation test,”

    Yeah, your paper needs serious revision brosensky. At the very least, add in the proviso that “in this author’s opinion 40% would have failed the MOT.” Because, as your examples will go on to show, you will be in substantial disagreement with anyone even halfway familiar with what the MOT was all about on pretty much all of your determinations. I could go through them one by one, but how boring is that?

    “claim a pencil, comprising a
    graphite writing component embedded in wood.” Central claiming, instead,
    often listed the things that the patentee wished to exclude others from doing.
    Thus, the pencil claim might read, “I claim the right to exclude others from making pencils by embedding graphite writing components into wood.” As a practical matter, both patents exclude the same thing – anyone making a
    pencil with graphite embedded in wood infringes.”

    Somebody writing this paper doesn’t even understand the difference between a product and a method claim. These two claims do not “as a practical matter” exclude the same thing. One excludes people from making, selling of using a pencil, and the other only excludes people from using a certain method. Where did whoever wrote this passage go to school on lawls? Did they not cover this difference in “Claims 0101″?

    “However, the central claim looks a lot like a method patent of today, appearing to claim the method of making a pencil, rather than the pencil itself.42″

    That is because it is a method claim… /facepalm.

    “This leads to ambiguity about how to treat downstream sellers and users of the pencil,”

    There is no ambiguity, you leave them be.

    Are a patent attorney? Or are you just yanking our chain?

    “A real example is illustrated in Patent X3130, to Jethro Wood on September 1, 1819: “In the first place, the said Jethro Wood claims an exclusive privilege for constructing the part of the plow … called the ‘mold-board,’ in the manner hereinafter mentioned.” This patent could be for the mold-board with the described configuration, or for the process of manufacturing a mold-board in a particular manner.43″

    No, actually, it can’t, it’s a method.

    ““It is for the discovery or invention of some practicable method or means of producing a beneficial result or effect, that a patent is granted, and not for the result or effect itself. It is when the term process is used to represent the means or method of producing a result that it is patentable, and it will include all methods or means which are not effected by mechanism or mechanical comnations.””

    We still have this today, in a slightly different form. Look it up in the MPEP, apparatus claims may not be limited by method steps they’re carrying out (that is, the steps get no patentable weight), and, typically method claims are not supposed to be limited by apparatus limitations (this is an instance of mixing stat classes) but that is “bent” sometimes today. We would still have the prohibition of limiting a method by the product being made if not for a dam careless CCPA decision back 50 years ago. But now you can just freely toss that in.

    Fraking courts just making decisions without regard to the ramifications thereof.

    But, in any event, like you say, back in the day valid method claims were for methods, that is a series of steps without regard to what was performing it or being acted upon by it, not method/products or method/apparatus. Some readers on here regularly disbelieve me when I tell them.

    “Interestingly, Corning militates directly against a historical requirement that processes must use a
    machine to be patentable; Corning holds the exact opposite.”

    Not really, you fail to understand what the decision is talking about. And you have misquoted the decision, “comnations” should be “combinations”. People could include product terms or apparatus terms in the claims, or the process could implicitly only be used on specific machines etc, to meet the machine prong of the MOT. The thing is though, those limitations were not given weight in claim construction, the difference in your claims had to be the step, not the thing the physical thing the step was tied to.

    In any event, this is all the facepalming I could take for tonight, gl with your article.

  89. “what difference does it make whether the patent claims a pure [new mental process] or [prior art]+[new mental process]?”

    Because prior art ( in the context of patent processes ) means physical acts and physical acts in combination with mental processes are patent eligible.

    Now you may GYF.

  90. Ned,

    Quite simply: BS

    There is no indication of a limitation on Congress power because quite frankly the case presents no such chance for such a notion to be made, even in dicta.

    You are over reading and making up something that just ain’t there.

  91. “However, to say that courts never limit transformations is ridiculous. ”

    You say that courts “limit” transformations and then quote the USSC telling you, EXPLICITLY, right smack dab to your face, that the first of the transformations (a transformation which is not “limited” in any way) in that case is IRRELEVANT. They did not “limit” the transformation what so ever. The transformation is there, they acknowledged it, they pointed it out to you explicitly. Keep reading, they also told you why it was irrelevant to the overall inquiry which they happen to be carrying out that day. Which, as I noted, is a different inquiry than the MOT.

    “So, one transformation is irrelevant, and the other is not really a transformation because maybe in the future it can be done without a transformation.”

    You’re close. Try this one on for size: One transformation is irrelvant, and the other is not really a transformation because it wasn’t recited with enough specificity to limit it only to transformative steps and allows for steps that are not transformative which may be developed in the future (or may even exist in the present day unknown to the court) to be considered as meeting that limitation.

    You’d find this rather easy to figure out, and make sense of, if you understood the actual inquiry which they’re applying. I dubbed it the preemption analysis back awhile back, I hope you like the name, but you can call it the judicial exception analysis if you’d like. Or you can call it whatever you’d like.

    “Sounds like two limitations on transformation to me.”

    They’re not limitations at all brosensky, they’re simply the court noting what the effect the recitation of a transformation has on the scope of the claim for the purpose of performing their current analysis which is NOT THE MOT. They are, in point of fact, pointing out a situation where the MOT might reach a different conclusion to the preemption analsis they are performing. They’re telling us specifically that there is a transformation, and thus it may well pass the MOT, but the claim is an attempt to patent the law of nature, and thus ineligible. That is not limiting a transformation, or what is considered to be a transformation what so ever.

    “I figure being cited by the Supreme Court is vindication enough.”

    I must have missed that citation, props for that, but I do hope they didn’t cite you for some mistaken proposition you managed to make and then managed to make sound official. That kind of thing happens too often already. EDIT: just saw you got into Prom by advocating the minimalist approach that they rejected. Gj bro.

    Hey guys, btw, got my 2nd appeal back the other day, chalk another one up in the ol’ affirmed category.

  92. Ned, if it is impossible to prevent one from “merely” thinking a new thought, why do we need a law protecting people from being prevented from thinking a new thought?

    Suppose all human beings were mortal and thus could not be killed, would we then need a law against murder?

    If the policy reason for MM’s mental steps dissection theory is to prevent people from being sued from thinking a new thought, that too fails logically and factually, because no one has ever, or could ever be successfully sued for merely thinking a new thought.

  93. Ned all process claims are going to require thoughts, new or old, in order to be applied, especially, a new use of a known process.

    U.S.C Title 35 §100(b) al- ready explicitly defines “process.

    (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.

    MM’s pet theory that you so foolishly and shamefully shill for would violate the statute.

  94. Clear Illegality:

    "But then, how do you interpret"
    Easy. They are merely talking about a different power of Congress.
     Just let me say this, I think that Golan clearly reaffirmed Graham's statement that Congress does not have the power to withdraw from the public domain knowledge long vested there that was not placed into the public domain by the inventor.
     
     

  95. such a theory is in conflict to Supreme Court precedent

    MM: “There is no conflict between the “theory” and the example given.”

    Actually, your theory that, “ALL claims in the form [oldstep]+[newthought] are ineligible for patenting” is in direct conflict with the following Supreme Court Precedent. ( Emphasis added ).

    See the cases most on point below:

    “a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made. The “novelty” of any element or steps in a process, or even of the <450 U.S. 189> process itself, is of no relevance in determining whether the subject matter of a claim falls within the §101 categories of possibly patentable subject matter. (12 Diehr)

    “12 MAYO COLLABORATIVE SERVICES v. PROMETHEUS LABORATORIES, INC. Citing Diehr
    The Court pointed out that the basic mathematical equation, like a law of nature, was not patentable. But it found the overall process patent eligible because of the way the additional steps of the process integrated the equation into the process as a whole.

    Those steps included “installing rubber in a press, closing the mold, constantly determining the temperature of the mold, constantly re- calculating the appropriate cure time through the use of the formula and a digital computer, and automatically opening the press at the proper time.” Id., at 187. It nowhere suggested that all these steps, or at least the combination of those steps, were in context obvious, al­ ready in use, or purely conventional. And so the patentees did not “seek to pre-empt the use of [the] equation,” but sought “only to foreclose from others the use of that equa­ tion in conjunction with all of the other steps in their claimed process.” Ibid. These other steps apparently added to the formula something that in terms of patent law’s objectives had significance—they transformed the process into an inventive application of the formula.”

    Notice the Court did not exclude ANY mental steps, old, or new, in it’s analysis. Having a new thought, or even an old thought as a part of a series of steps does not make an entire claim ineligible for patenting.

  96. Prof. Risch,

    I was not taking issue, but rather, merely offering an insight into NWPA’s extreme response.

  97. But then, how do you interpret

    Easy. They are merely talking about a different power of Congress.

    You have to be trying hard to get this wrong to think that Congress does not have full, and complete control of the patent law.

    The question remains, why is the Court meddling?

  98. MM: “My “mental steps test theory” is not a “theory”, suckie. It’s a statement of irrefutable fact. Go ahead and try to refute it. You will fail.”

    irrefutable facts require evidence. And in this context of a legal discussion the required evidence is case law. Since you can’t cite any case law that holds, ” all claims in the form [oldstep]+[newthought] are ineligible for patenting” your theory remains just that, a theory.

    “I identified the relevant passage. Let me know if you need me to re-cite that passage for you.”

    I am not interested in Court dicta, chatter and or your personal spin, conjecture, and supposition. Such rhetoric carries no legal weight. The ONLY action I am interested in is a citation to the case law that holds, “all claims in the form [oldstep]+[newthought] are ineligible for patenting.”

    But as we know, you have not, and cannot cite the holding of ANY Court case that holds “all claims in the form [oldstep]+[newthought] are ineligible for patenting.”

    If you could you would have done it right here and now.

    “You mean “guest authors” like patent litigators and prosecutors whose clients who are deeply invested in the patenting of facts and other abstractions.”

    Never in the history of patently O, has a guest author, patent litigator, prosecutor or any of their clients advocated the patenting of mere facts or abstractions. For that lie alone, you owe an apology to Dennis and the entire Patently O Community.

  99. RTFP. If you are as smart as you say, then you know what that means. I explain what I call a transformation and what I don’t.

    However, to say that courts never limit transformations is ridiculous. A quote from Prometheus: “The first of these transformations, however, is irrele­vant. As we have pointed out, the “administering” step simply helps to pick out the group of individuals who are likely interested in applying the law of nature. … And the second step could be satisfied without trans­forming the blood, should science develop a totally differ­ent system for determining metabolite levels that did not
    involve such a transformation.”

    So, one transformation is irrelevant, and the other is not really a transformation because maybe in the future it can be done without a transformation. Sounds like two limitations on transformation to me. I think I need to add this as a footnote in the paper.

    As for the handholding, etc., I figure being cited by the Supreme Court is vindication enough. I can live without your approval.

  100. Once again, Prometheus has nothing to do with your fake theory. The fact that you keep claiming a 9-0 victory is just a sign that you are clueless. Let’s see you keep on singing when your field feels the fallout.

  101. Here we go with Malcolm’s exponential I told you once I told you a million times crock of shtt.

  102. hasn’t been properly understood by the bar until just now with the Prom decision.

    Lolz – the Prom decision that cannot be understood with the very precedents it says it upholds.

    Poor example.

  103. I haven’t been able to read

    Stopping there at the pinnacle of accuracy would have been more than sufficient.

  104. I don’t mean to be too harsh, as I’m sure that is how I’m sounding. I’m sure you tried on your paper. I presume however that you have little hands on experience in actual prosecution since you seem to be making roflbabycakes mistakes. Thus, while I’m sure your paper has some historical value, you perhaps should have brought in a consultant to help you with the details on the MOT, or gone into the paper with another researcher. Either that, or simply left the commentary out and just gave us the facts.

    In any event, no, I haven’t been able to read this 50 page monstrosity, nor do I really have any desire to. Although, I suppose I will bite the bullet and at least skim it to see what “court” supposedly “limited transformation to be much more restrictive than “this””.

    I will be very interested to hear about this court as plainly no court has ever done such a thing. This is an area of the lawl I keep up with on a daily basis, where people like Ned constantly bombard us with every decision that is even tangental to this topic. The only possible courts that may have restricted the notion of transformation thus are the ancient courts from the 1800’s- and early 1900’s. And even if they did, so what? They’ve been working the kinks out for the past 200 years. It took until roughly the 1980’s for the actual test to emerge, and it hasn’t been properly understood by the bar until just now with the Prom decision.

    In any event, I have work to do, but I will skim it later.

  105. What is under discussion is the case law that allows mental steps to be included in patent claims

    The case law that “allows” mental steps to be included in patent claims stands for the following trivial and uncontested proposition: the mere presence in a claim of ineligible subject matter does not render the claim per se ineligible.

    Of course, that is not the same as saying that all claims which recite ineligible subject matter and eligible subject matter are per se eligible. Only a m0r0n would confuse the two statements. Only a dissembling dishonest hack would do confuse the two statements repeatedly, after being corrected dozens of times.

    I’ve made this point probably hundreds of times in these comment threads over the years and at least once already in the instant thread. Suckie knows that. Yet suckie continues to dissemble. That tells you all you need to know about suckie.

  106. . If transformation were as broad as you say, then things would be great, but courts have limited transformation to be much more restrictive than this.

    Really? I think transformation is still a very broad term. The important point is that not all transformations that occur during the practice of particular claim are legally dispositive of eligibility. That’s by necessity, of course, since the contrary view would lead to claim drafting strategies that would cause human beings with a conscience (i.e., roughly 80% of patent prosecutors) to vomit involuntarily.

  107. Yes.

    However, my hunch is that the courts would not allow it, because if you strip away the “magic” of the function and show the judges what is really at issue they’d be like, “are you fin kidding me that this is supposed to be patentable, eligible, or an exception to the WMD?” And the attorney in the case would get all sheepish and stammer “yes, yes your honor that is our contention”. Then the judge would probably toss the case immediately and fine the attorney and his client under rule 11.

    So, regardless of my qualms, I doubt you or I will even be having this discussion when that goes down a time or two.

    My real issue is that people are currently being hoodwinked by the magic of the form of the claims, specifically, the overuse of functional language to mask the actual issues.

    How do we know that this is going on? Because you have a BPAI that decides, overwhelmingly, that software is not patenable if claimed as software, but then turns around and says it is patentable as long as you get the form of the claim correct.

    This is outrageous.

  108. the issue has never been one of patenting purely mental processes

    Correct. The issue has been: from the perspective of one practicing the prior art, what difference does it make whether the patent claims a pure [new mental process] or [prior art]+[new mental process]?

    It’s a simple question, suckie, with a simple answer. 9-0.

    LOL.

  109. Ouch. Apparently you didn’t read the paper, because I discuss this point at length. If transformation were as broad as you say, then things would be great, but courts have limited transformation to be much more restrictive than this. So, yes, I was a bit more careful in thinking about what is and is not a transformation than you are being here. Sorry about that.

  110. I already addressed your previous paper, iirc, in another thread. Or perhaps it was a pre-pub of this paper. In any event, I will note, as I did before, that your idea of something not covered by the MOT is insane sire. Bending iron, tempering iron, or whatever have you is the very definition of a transformation. You have an unbent piece, and then, magically, you have a bent piece. Oh wait, I meant “through a transformation” instead of magically.

    “Another is using rosin to coat tin on a pipe (for that one, I consulted a chemist). ”

    You consulted a chemist to know whether or not adding a coating of tin to something else transforms that something else? Are you serious?

    “In the end, I figured that even if I’m wrong about half of them (which I doubt), ”

    You should have concluded that you’re only right about maybe half a percent of them, which is, still, like near 0 percent. Because you are, apparently, incapable of understanding what the MOT is even about.

    Although, that said, even as incompetent as you are at understanding the MOT, you are right that the MOT is not the standard and never should have been flirted with in the first place.

    Michael Risch, the researcher who thought he would redefine who invented the computer. You don’t forget a guy like that.

  111. Parallel to the great bio-depositories solution, would a depository of computer discs really solve all of your qualms, 6?

  112. Malcolm is right and logical on almost everything he says. Take it to the bank.

    LOLZ.

    The jokes write themselves.

    Good one Ned.

    Let’s see MM actually use law and reason instead of of bluster and insults.

  113. Ned,

    One: dissent. Really?
    Two: so what? your long quote has nothing to do with the discussion at hand.

  114. NWPA is a regretabble story here on PO. He was driven insane by Bilski and a slew of other decisions, like Cybersource.

    As you say, he once spoke with some semblance of rationality even if it was a bizarro rationality.

  115. Ned, he is applying the antithesis that accompanies the inclusion of claim dissection, which has always been a part of his theories. In this manner, Malcolm has never held the position you are making now of straw.

  116. The “mental steps” doctrine…

    Nice strawman Ned. But that’s not the topic under discussiion. What is under discussion is the case law that allows mental steps to be included in patent claims.

  117. “Do you think it is a minor point when Lemley writes that the structure of a computer program is unrelated to its function? It may be minor in the sense of not taking many words to describe, but it strikes to the heart of whether or not software should be eligible for patentability.”:

    I’m going to be honest with you NWPA, I will agree with you that the “structure” aka the little dips on a CD are important. And for that reason, I think software should be patent ELIGIBLE if you properly disclose it. Indeed, I think any court would agree on this. However, in cybersource you see a case where they conveniently forgot to tell us what is actually different about the structure, but just told us about the function. Thus, the court understood them to simply be claiming the function, a method because there was no disclosure talking about the structure which causes the functions.

    That said, 112 1st paragraph is going to be a fkin doosey to get around once the shinanigans that you’re trying to pull are more fully understood. What you want to do is to functionally define a genus of these structures, disclose NONE (currently) of these species of structures or a FEW of these species of structures (under my plan) and claim the whole genus. 112 1st has something to say about that practice.

    But, at the least, if you did start telling us about the structure then at least after a few hundred thousand patents are issued then we’ll start making 102’s on all software using the structures in the references to reject rather than the functions as softwaretards do now.

  118. Proof that I’m neutral. NWPA says I don’t focus on structure enough, and Ned says I focus on structure too much. I won’t take a position here, including on the “numbers in/numbers out” issue. I’ve written about that elsewhere, so you can download my other articles if you are interested.

    My point, which this comment illustrates, is that the issues are older than most might have thought.

  119. A good point. Turns out I didn’t see any such patents, but my thought was a method of bending the iron – not the tempering. I address this issue a few times in the paper. One example is a tempered pitchfork. Another is using rosin to coat tin on a pipe (for that one, I consulted a chemist). In the end, I figured that even if I’m wrong about half of them (which I doubt), it’s still 20%, which is still pretty high.

  120. Professor Risch, regarding the loom with new punch cards, the loom was dedicated to an end use, and a punchcards modified the operation of loom to produce an improved or modified end use. In this regard, I think the dedicated computer analogy is apt. A programmed computer adapted to a specific end use where the program modifies or improves the end use, is patentable subject matter. That was suggested to be the case in Alappat, where the hypothetical claim to a programmed computer was approved in principle by the court because the claim’s preamble specifically limited the use of the programmed computer to a graphics display.

    Night writer and I have been discussing this issue and distinction for quite some time. He seems to us understand the distinction I am making, but will never concede the point. He claims information processing changes the energy state of information. I will agree. But I also try to point out to him that what he is saying is that he is measuring information from the real world, processing that information in the computer, and then outputting information back into the real world. It is the tie into the real world that is important.

    The singular problem with the claims in Benson was that they were not tied to any end use. Nor was the BCD algorithm clearly limited to modify, on a permanent basis, the computer such as to form part of its structure. Rather the way the claims were structured in that case, and as construed by the Supreme Court, general purpose computer was not modified, but was rather used.

    But back to the loom. I hope you would agree that changing the program of the loom when the loom is adapted to specific end use is quite a bit different than using a general purpose digital computer to calculate a mathematical algorithm where there is no use claimed for the mathematics. Numbers in, numbers out. No measurement of anything. No ties to the real world other than the use of a general purpose computer as a tool.

  121. Risch says: “There are many patented processes that have nothing to do with machines or transformations— . . . for example, forming wrought iron).”
    Isn’t that a transformation of brittle high carbon iron to low carbon iron with different physical properties? Bad example, but valid underlying point?

  122. Actually, Dorothy, Malcolm is right and logical on almost everything he says. Take it to the bank.

    To the extent you do not understand this, I can only figure that you have a large financial reason to oppose and denigrate Malcolm and his reasoning.

  123. Dorothy,

    OK, if it is possible for us to prevent one from “merely” thinking a new thought, please tell us how?

    Your assumption that Malcolm is the only one who takes this position is ridiculous. The “mental steps” doctrine is as old as the hills, and is one of the listed exceptions in Benson:

    “The Court stated in Mackay Co. v. Radio Corp., 306 U. S. 86, 94, that “[w]hile a scientific truth, or the mathematical expression of it, is not a patentable invention, a novel and useful structure created with the aid of knowledge of scientific truth may be.” That statement followed the longstanding rule that “[a]n idea of itself is not patentable.” Rubber-Tip Pencil Co. v. Howard, 20 Wall. 498, 507. “A principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right.” Le Roy v. Tatham, 14 How. 156, 175. Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work. As we stated in Funk Bros. Seed Co. v. Kalo Co., 333 U. S. 127, 130, “He who discovers a hitherto unknown phenomenon of nature has no claim to a monopoly of it which the law recognizes. If there is to be invention from such a discovery, it must come from the application of the law of nature to a new and useful end.” We dealt there with a “product” claim, while the 68*68 present case deals with a “process” claim. But we think the same principle applies.

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

  124. Prometheus, from Malcolm’s posts in this thread, I now know that Malcolm fully agrees with “integration.”

    He is not talking, however, about “integration” with his old step + new thought. He is talking about its antithesis.

  125. He does not want copyright for functionality. Nor does any copyright attorney I know – because sometimes you’re the defendant. And the law has never protected functionality. You are right that this increases the importance of software patents.

    Like I said, show me the quote in the article in context. I would be surprised if there is something to take issue with.

  126. For copyright, you WANT to argue that the structure of the program is unrelated to its function.

    He does not want copyright.

    The fact that copyright protection is so weak is actually another (under discussed) reason why patent protection for software is critical.

  127. You kept writing “structure” as if it is the structure of the machine. I didn’t realize you meant structure of the program. For copyright, you WANT to argue that the structure of the program is unrelated to its function. If you argue that the structure, sequence and organization are tied to functionality, you LOSE copyright protection. This is exactly what’s going to happen in Oracle v. Google. Oracle says the API structure is creative and not required for functionality. However, the only way to make a cleanroom version of Java is to copy the API structure, and Oracle is going to have its copyrightability in the API limited.

    When you have time, if you point me to the article, I will be happy to look at it and say that I’m getting it wrong if indeed I am.

  128. Anon, see my post at 01:26, May 31.

    I think the court Golan and in Eldred limited their holding of Congress’s power to extensions, where the inventor had brought the invention to the public in the first place.

    It seems that Graham has “held” (I will assume for the moment that this is in fact the case) that it is beyond the power of Congress to authorize patents on information alrealy in the public domain.

    Do you agree?

  129. The heart of the matter that is important to you. It’s 3 paragraphs in this 50 page paper that is not directly about software patents. And the “minor” point I meant was your assertion that this was all just a fraud because I didn’t drop a footnote to say that some people disagree with me (which I did, but based on your feedback, I will do more clearly now)

  130. >>That said, I’ve never known Mark to say that >>structure is unrelated to function.

    Too busy to engage right now, but Lemley did write that the structure of a computer program is unrelated to its function in his paper on copyright protection for software.

  131. Friends, "If anything, Golan is the clearest (I dare say most brightline) decision on this matter EVER: the power is as the constitution dictates, totally with Congress."
     
    That is one interpretion of what they held, indeed.  But then, how do you interpret the last sentence from the Courts discussion below:
     
    "Pointing to dictum in Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966), petitioners would have us look past this history. In Graham, we stated that "Congress may not authorize the issuance of patents whose effects are to remove existent knowledge from the public domain, or to restrict free access to materials already available." Id., at 6, 86 S.Ct. 684; post, at 907. But as we explained in Eldred, this passage did not speak to the constitutional limits on Congress' copyright and patent authority. Rather, it "addressed an invention's very eligibility for patent protection." 537 U.S., at 202, n. 7, 123 S.Ct. 769."
     
    Note 7 from Eldred
     
    "JUSTICE STEVENS would sweep away these decisions, asserting that Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966), "flatly contradicts" them. Post, at 237. Nothing but wishful thinking underpins that assertion. The controversy in Graham involved no patent extension. Graham addressed an invention's very eligibility for patent protection, and spent no words on Congress' power to enlarge a patent's duration."
     
    I think the Court was saying that extensions are an entirely different kettle of fish from patenting information from the public domain that  the inventor did not put there in the first place.

  132. if as in “key part” you mena that all nine justices said it was not determinative in that case…

    Reading comprehension FAIL. Here it is again:

    “the MoT test provides very relevant clues to patent eligibility. That was a key part of the Bilksi decision, and was undisturbed by the holding in Prometheus.”

    You can spin and deny all you want, suckie. The facts remain unchanged. You really are pathetic.

  133. Well, a response on the merits, which I am happy to engage. I am not Lemley, and we disagree on some things (many, in fact). That said, I’ve never known Mark to say that structure is unrelated to function. What he has said, and that I agree with, is that software PATENT CLAIMS are often separated from the PARTICULAR structure. And no, adding “with a memory and cpu” is not particular structure – all computers have this – it is not the limited structure on which the solution was invented.

    What happens is that someone figures out an inventive way to solve a problem with a particular structure, but then claims that solution for ALL structures, even ones where the solution is not inventive. I invent a really cool way to calculate finger position on a touch panel with hardware that made it difficult. Great – and a patent should issue. But then I claim all touching of a screen to calculate coordinates, which is not so inventive when better screens come out. The initial software is 100% tied to the structure, but the claim is not tied to the structure. Whether this creates a problem or not is for another day.

    Note that this does not mean I think we should get rid of software patents. The entire point of my article, which you seem to be missing, is that courts were WRONG to limit methods only to a particular machine, and that our current practices of ignoring post-solution activity are based on a flawed importation of British law. I would have thought you agreed with that point.

    As for the loom:
    1. I don’t care if people want to use the fact that it existed to their benefit one way or the other – this is a paper about history, and the history existed. People are free to argue how the loom is the same or different from modern patents, as you have done.

    2. Even so, I’m surprised that you take the view that I pitched this as anti-software. I think you are projecting. The way I read it, I am pointing out that the debate is old (and not limited to information processing – a fair point that I will add to the final), but that it seems ODD that we might allow a patent on a new loom design, but not on the same design when implemented in punchcards: “it is unclear why nonobvious ‘hardwired’ variations in loom design should be patentable, while nonobvious ‘software’ variations [in] loom punchcard design should not be when the resulting product is the same.”

    Seems to me that this is decidedly pro-software, and arguing the same point you are – that the loom “software” is tied to the loom “hardware” and that there doesn’t seem to be a principled reason to exclude it from patentability.

    I don’t know what assumptions you think I’m making that lead people to think the cards are ineligible. The facts of the loom are what they are, and if you want to argue that adding a memory and a cpu for information processing is different, then fine with me.

  134. Let’s remember: you were invited to present your “case law” arguments coherently, suckie. You declined.

    Your memory is in error, MM.

    It was you that was invited to present your theory (or “statement of irrefutable fact” ;-) ) in the context of existing case law on mental steps.

    It was you that declined, answering instead only with abusive language.

    Just as you never answered the invitation, you never offered a reason for not answering.

    You now say “ I rely on are those cases which state that you can not patent mental processes.” which is both false and misleading, as the issue has never been one of patenting purely mental processes, which would be the only case law that even remotely is a candidate upon which you could (if you did, but you did not) call upon.

    Errors, insults and dishonesty will only get you so far.

  135. the structure of a computer program

    Computer programs are not compositions of matter and as such lack legally relevant “structure.”

    You might as well talk about the “structure” of your favorite song (Queen’s “Bohemian Rhapsody”).

    link to youtube.com

    While that “structure” may result in a transformation of your brain or other organs, it is not legally relevant and does not impart patentability (or patent eligibility) to the song. It would require the manufacture of a legal and logical myth for such relevance to adhere. That’s exactly what happened in the case of Beauregard claims.

  136. Dorothy, The best opinion I have ever read on this topic is by Justice Nelson in dissent in Le Roy v. Tatum.  After reviewing cases, he concludes,
     
    "[A]a person having discovered the application for the first time of a well-known law of nature, or well-known property of matter, by means of which a new result in the arts or in manufactures is produced, and has pointed out a mode by which it is produced, is entitled to a patent; and, if he has not tied himself down in the specification to the particular mode described, he is entitled to be protected against all modes by which the same result is produced, by an application of the same law of nature or property of matter. And a fortiori, if he has 187*187 discovered the law of nature or property of matter, and applied it, is he entitled to the patent, and aforesaid protection.
    And why should not this be the law? The original conception — the novel idea in the one case, is the new application of the principle or property of matter, and the new product in the arts or manufactures — in the other, in the discovery of the principle or property, and application, with like result. The mode or means are but incidental, and flowing naturally from the original conception; and hence of inconsiderable merit. But, it is said, this is patenting a principle, or element of nature. The authorities to which I have referred, answer the objection. It was answered by Chief Justice Eyre, in the case of Watts's patent, in 1795, fifty-seven years ago; and more recently in still more explicit and authoritative terms. And what if the principle is incorporated in the invention, and the inventor protected in the enjoyment for the fourteen years. He is protected only in the enjoyment of the application for the special purpose and object to which it has been newly applied by his genius and skill. For every other purpose and end, the principle is free for all mankind to use. And, where it has been discovered, as well as applied to this one purpose, and open to the world as to every other, the ground of complaint is certainly not very obvious. Undoubtedly, within the range of the purpose and object for which the principle has been for the first time applied, piracies are interfered with during the fourteen years. But any body may take it up and give to it any other application to the enlargement of the arts and of manufactures, without restriction. He is only debarred from the use of the new application for the limited time, which the genius of others has already invented and put into successful practice. The protection does not go beyond the thing which, for the first time, has been discovered and brought into practical use; and is no broader than that extended to every other discoverer or inventor of a new art or manufacture.
     
    "I own, I am incapable of comprehending the detriment to the improvements in the country that may flow from this sort of protection to inventors.
     
    "To hold, in the case of inventions of this character, that the novelty must consist of the mode or means of the new application producing the new result, would be holding against the facts of the case, as no one can but see, that the original conception reaches far beyond these. It would be mistaking the skill of the mechanic for the genius of the inventor.
     
    "Upon this doctrine, some of the most brilliant and useful inventions of the day by men justly regarded as public benefactors, and whose names reflect honor upon their country — the successful 188*188 application of steam power to the propulsion of vessels and railroad cars — the application of the electric current for the instant communication of intelligence from one extremity of the country to the other — and the more recent, but equally brilliant conception, the propulsion of vessels by the application of the expansibility of heated air, the air supplied from the atmosphere that surrounds them. It would be found, on consulting the system of laws established for their encouragement and protection, that the world had altogether mistaken the merit of their discovery; that, instead of the originality and brilliancy of the conception that had been unwittingly attributed to them, the whole of it consisted of some simple mechanical contrivances which a mechanician of ordinary skill could readily have devised. Even Franklin, if he had turned the lightning to account, in order to protect himself from piracies, must have patented the kite, and the thread, and the key, as his great original conception, which gave him a name throughout Europe, as well as at home, for bringing down this element from the heavens, and subjecting it to the service of man. And if these simple contrivances, taken together, and disconnected from the control and use of the element by which the new application, and new and useful result may have been produced, happen to be old and well known his patent would be void; or, if some follower in the tract of genius, with just intellect enough to make a different mechanical device or contrivance, for the same control and application of the element, and produce the same result, he would, under this view of the patent law, entitle himself to the full enjoyment of the fruits of Franklin's discovery."

  137. was a key part of the Bilksi decision

    Lolz – if as in “key part” you mena that all nine justices said it was not determinative in that case…

  138. Sounds like one of the paid advertisements (MM for example) taking a shot at me.

    C’mon.

    Since when have I used a pseudonym for that purpose, NWPA?

    Answer: never.

  139. (sigh)

    Printed Matter Doctine and associated exceptions…

    C’mon MM, this is old hat.

  140. So, you see, this minor point as you say, is not a minor point, but strikes to the heart of the matter.

  141. Um, sure (notes that MM’s tinfoil hat is on too tight from the 12:31 PM post), but these are:

    Okay, that’s a lie. You caught me.

  142. Thank you for your reply. Do you think it is a minor point when Lemley writes that the structure of a computer program is unrelated to its function? It may be minor in the sense of not taking many words to describe, but it strikes to the heart of whether or not software should be eligible for patentability.

    As to the loom, this again is not a minor point other than in the number of words. The difference between the cards of the loom and software is that the software is a Turing machine with all the implications of the Church-Turing Thesis. The loom and cards is an example that the Benson crowd has been using for thirty years to try and remove software from patent eligibility. So, of course, it is a sore point.

    And, the way to think about the software is that it is really a big giant machine that has been shrunk using Johnny von Neumann’s architecture of putting the structure in a memory with a few basic operations rather than building the giant machine. The structure is all still there and a special purpose computer can be built that would run faster and explicitly show all that structure.

    I didn’t miss the entire point. My point is that the discussion is off the mark and by your assumptions will evitably lead to peopl e believing the cards are not eligible for patentability. The loom and cards is a bad example because it is a finite universe that is being played with. The computer can potentially compute anything that can be computed. So, the cards of the loom should not be used as an example. A physical card reader that can punch cards too (write to memory) and loop cards would be a physical example that could be used.

    And, try to keep in mind that the loom and cards is an example that has been used since Benson to justify software not being eligible for patentability. You are speaking to someone that has had many arguments with the architect of Benson.

    I’ll take a closer look at your paper over the weekend and provide feed-back in a manner where perhaps the tone will not interfere with the message.

  143. “it is impossible to prevent someone from merely thinking a new thought.”

    Nice strawman.

    LOL. Those aren’t my words.

  144. unlike software, which can reside in the machine to make a new machine

    You just put the cart before the horse.

  145. MR

    It is not whether the structure of the loom is patentable. It’s whether a set of punchcards with a new design is patentable. Indeed, unlike software, which can reside in the machine to make a new machine, the punchcards never become part of the new machine.

    Not unlike a piano roll, a compact disc, or a phonograph. Were such ever deemed patentable over prior art punch cards/rolls/discs/phonographs based on the information content?

  146. “Just in case anyone missed it” MM still has not added anything of note to the conversation.

    Actually, suckie, I was the first to add something “of note” to the “conversation.” Specifically, I informed Mr. Risch that contrary to what he suggested in his article, the MoT test was “rejected” by the Supreme Court primarily because in the hands of thoughtless ignorami it fails to screen out claims like those at issue in Prometheus. I failed to note then but will note now, for the record, that the MoT test provides very relevant clues to patent eligibility. That was a key part of the Bilksi decision, and was undisturbed by the holding in Prometheus.

    So once again, suckie: you’ve been busted trying to smear another commenter with a fabrication.

  147. it is impossible to prevent someone from merely thinking a new thought.

    Nice strawman.

    Too date, you are the only voice in that conversation.

    And you think others are wearing tinfoil hats…?

  148. ” Do you agree, Michael, that all claims in the form [oldstep]+[newthought] are ineligible for patenting?

    No, because such a theory is in conflict to Supreme Court precedent

    There is no conflict between the “theory” and the example given. My “theory” (actually a statement of irrefutable fact) does not relate to “inventive applications” of otherwise ineligible subject matter. It relates to claims in the form [oldstep]+[newthought]. That much is crystal clear to anyone with 5th grade reading comprehension skills.

    As for a change in policy

    There is no change in policy. The prohibition on patents which turn practitioners of the prior art into literal infringers when they think [new thought] is very, very old. You’ll note that claims on purely mental processes have the identical effect on the public.

    it is impossible to prevent someone from merely thinking a new thought

    And therefore we should allow patents to be granted which turn people who think a new thought into literal infringers? Because nobody will ever sue those literal infringers? Only on your planet, suckie.

    it is impossible to prevent someone from merely thinking a new thought.

  149. your mental steps test theory.

    My “mental steps test theory” is not a “theory”, suckie. It’s a statement of irrefutable fact. Go ahead and try to refute it. You will fail.

    your mental steps test theory is not in the prometheus decision in ANY context whatsoever

    That’s false. I was one of the very first commenters on the Internet to discuss the case and within my first two or three comments I identified the relevant passage. Let me know if you need me to re-cite that passage for you.

    the mental steps cases your theory is based on

    The “mental steps cases” I rely on are those cases which state that you can not patent mental processes. Do you know what it means to be prohibited from patenting a mental process? Hint: it does not mean that a claim that merely recites a mental step (or some other ineligible subject) matter is per ineligible. Let’s remember: you were invited to present your “case law” arguments coherently, suckie. You declined. I know why you declined: because your arguments s-ck.

    No wonder every single guest author and all the respected members of the patent community ignore you each time you bring up this theory.

    You mean “guest authors” like patent litigators and prosecutors whose clients who are deeply invested in the patenting of facts and other abstractions? LOLOLOLOLOLOL!!!!!!!

  150. final arbiter of the law when there is a dispute

    But not a first decider of that law.

    Therein, lies the problem. You said it yourself, the Court is trying to define something. But the Court shouldn’t be trying to define something. That job belongs to Congress. Clearly, after 1836 it is only up to Congress to define.

    The question remains, why is the Court meddling?

  151. Friends, "Congress took control back over. Why again is the Court involved when Congress and the constitution are clear…"
     
     Back?
     
    Congress was always in "charge" in terms of setting policy and writing the law.
     
    The question of who was to make the initial judgment concerning what was an invention was moved from the PTO to the courts in 1793, and back to the PTO in 1836. 
     
    But the courts are always the final arbiter of the law when there is a dispute.  That is fundamental in our form of government.

  152. “Michael Risch said in reply to NWPA…
    Huh?”

    I pop into this forum every now and again. “NWPA” used to go by the fuller handle, “Night Writer Patent Attorney” and believe it or not (IIRC), some time ago or a few years ago when I first remember reading its posts, it actually seemed to be sane or to at least make some sense.

    Today, meh.

  153. is not the question. I would like to know just what are the limits of congress’s power under Art. I, Section 8

    Respectfully, “what are the limits” is not the question.

    The question is how is the Court supporting its bald assertion that its chosen gate enforces the limit so chosen.

    I think that it is a valid point raised that no one has ever questioned the veracity of what the court has proclaimed. Everyone has always simply assumed that the Court’s supposition was unassailable. Should we not question such a powerful premise?

  154. Huh? First, the card reader is patentable. What about the cards? That’s the issue. The point of my discussion is that you can easily patent a loom with a new design, but the idea of patenting the design itself on cards was not so clear. And in fact, I take no position on the issue – only note the struggle, and I’ve written 100 other places that software should be patentable. I just don’t get the vitriol.

  155. Your ability to fixate on the most minor of points, especially in an article where I generally agree with your view, is amazing. First, I don’t claim that the Jacquard loom is a general purpose computer. I claim that it uses a primitive form of software. I then cite that many credit Babbage with the first such computer. That I recognize the dispute is evident in my blog post above: “though I know some think that this is not really software.”

    Second, even if people dispute whether the loom is information processing, the general discussion is accurate regardless of what you call it.

    Third, you miss the entire point of the discussion. It is not whether the structure of the loom is patentable. It’s whether a set of punchcards with a new design is patentable. Indeed, unlike software, which can reside in the machine to make a new machine, the punchcards never become part of the new machine.

    I wish the world was so simple and black and white as you seem to perceive it. In your view, structure is everything. Then I go to Groklaw and they tell me, albeit far less rudely, that structure is nothing. God forbid it wind up somewhere in the middle.

  156. And by the way, isn’t a card reader much closer to a general purpose computer than a loom? Card readers used to recieve lots of patents and were the start of IBM. No one had any problem with card reader patents. I suppose the structure of a card reader has nothing to do with its function? Right?

    I won’t even get into the fact that you have misrepresented J. Rich’s arguments regarding methods and machines.

    I see Lemley has spawned itself.

  157. Read Graham v. John Deere on that

    To take a page from NH, anything in Graham that would extend past what is actually provided by Congress is dicta, not holding. And dicta cannot overcome the clear lines of authority as provided in the constitution.

    Jefferson’s views are not and were not law. The United States was never the Kingdom of Jefferson. He was but one man. One man was not given the authority to write patent law by the constitution. He was not Congress. A rogue group of nine depending on a rogue group of one to justify an illegal power grab only sounds impressive when you depend solely on the name of the person being used. But our system of law should be able to see through such charade.

  158. Makes me wonder if there is any decency in the academic world. I wonder if there is a way to report you for academic dishonesty. Surely there must be some standards around that say that if you are writing a paper for a journal that you should flag contentious issues and cite to opposing views. This is something that you not don’t do, but you present contentious issues as if your side is accepted fact.

    Shameful. But, again, it is amazing how similar your paper is to a brief from your law firm. Shameful.

  159. A loom with cards is the same as a general purpose computer with a cite to Excel v. AT&T. This is not correct and a highly contested point that the anti-information processing birthers make. For you to present this in an “academic” paper with no acknowledgement that it is a point of high contention means you are not writing an academic paper but a legal brief, which is basically how all your work reads.

    What is amazing about your paper is how bad it is. The way you cite to things that do not back up your assertions, the way you slide by the points of contention. It is amazing how similar your writing is to legal briefs that are produced by your contingency based law firm.

    Look for structure for inventions. Structure is the key. That is why the Lemley lie that there is no correlation between the structure of a computer program and its function is so pernicious.

    I’ll take a closer look over the weekend to see if there is anything intereseting that this “academic” pulled out of the archieves, but you can be sure that nothing that this creature produced is going to be worth reading. Why don’t you, Professor, grow up and treat ideas of others fairly and present them fairly. Answer the question about the Lemley lie about the structure of computer programs not being related to their function.

    You know, those of us that actually study and practice patent law can see right through you.

  160. I think this is exactlyright Friends. And, in Diehr they even said as much and implied that Benson was bad law, and said explicitly that Congress had this issue before it and should decided. By Congress not doing anything, they did decide that information processing is patent eligible and SCOTUS is acting outside their authority.

    Congress should wack them hard. This court is way out there and what they are doing in patent law is just one of many examples.

  161. ” Do you agree, Michael, that all claims in the form [oldstep]+[newthought] are ineligible for patenting?

    No, because such a theory is in conflict to Supreme Court precedent which clearly demonstrates, and so states that an Applicants claims are patent eligible subject matter because of the way the technology of the claim
    is integrated into the process as a whole. ( See 12, Prometheus below).

    As for a change in policy it is also impractical and not needed because it is impossible to prevent someone from merely thinking a new thought.

    12 MAYO COLLABORATIVE SERVICES v. PROMETHEUS LABORATORIES, INC.
    The Court pointed out that the basic mathematical equation, like a law of nature, was not patentable. But it found the overall process patent eligible because of the way the additional steps of the process integrated the equation into the process as a whole.

    Those steps included “installing rubber in a press, closing the mold, constantly determining the temperature of the mold, constantly re- calculating the appropriate cure time through the use of the formula and a digital computer, and automatically opening the press at the proper time.” Id., at 187. It nowhere suggested that all these steps, or at least the combination of those steps, were in context obvious, al­ ready in use, or purely conventional. And so the patentees did not “seek to pre-empt the use of [the] equation,” but sought “only to foreclose from others the use of that equa­ tion in conjunction with all of the other steps in their claimed process.” Ibid. These other steps apparently added to the formula something that in terms of patent law’s objectives had significance—they transformed the process into an inventive application of the formula.

  162. MM: “I told you this before Prometheus. I told you to take it to the bank. 9-0.

    Are you ready yet to put your example in proper context.”

    Only problem is the 9-0 holding is not an affirment of your mental steps test theory.

    In fact your mental steps test theory is not in the prometheus decision in ANY context whatsoever.

    On top of that you apparently do not even have the intellectual capacity to discuss the mental steps cases your theory is based on.

    No wonder every single guest author and all the respected members of the patent community ignore you each time you bring up this theory.

  163. Just in case anyone missed it” MM still has not added anything of note to the conversation.

    And yes, I am aware that most everyone ignores anything that comes after “MM said…. Everyone that is, besides Ned, 6, and Anon.

    It’s safe to continue that practice. Pay no attention to that man behind the curtain.

  164. We have been debating this question here for some time.

    Actually Ned, as I read the comments, you have been avoiding giving an answer on “this” for some time and remain in the dark.

    The “this” is whether or not the Court can constitutionally be involved. Note the (still) pregnant pause in the expectancy of an answer from you on whether or not you ascribe to illumination from A New Light (not constitutional) or if you are fully pregnant (and include the Court’s verdict as provided in Chakrabarty).

    As is, you waffle between the two, in perpetual twilight, committed to neither, attempting to pick and choose from both, stumbling in your attempts to redefine holdings and dicta without any light of understanding.

    If anything, Golan is the clearest (I dare say most brightline) decision on this matter EVER: the power is as the constitution dictates, totally with Congress.

    Perhaps the clarity comes because the Justices in Golan were not concerned with keeping their fingers in the wax nose of patent law. Perhaps they just picked a winner by recognizing that Judicial Activism in Golan would have to stand in the spotlight of countermanding what Congress agreed to, even as they had to surrendeer their “sacred” in-the-public plank.

    A New Light traces back to KSR and common sense. Perhaps in Golan the common sense of where the constitutional authority, all proper authority, will finally shine a beacon on the Court’s illegal interference in patent law.

    Do we have to argue this point? Have to? No, we don’t have to. We should all come to the realization that the Court has long been buggered in the nose of patent law, and it is high time they were politely shown some manners, and told not to pick that wax, to stay out of something that is none of their bee’s-ness. It is high time they feel a little sting for sticking their nose where it does not belong.

  165. That rationale should be questioned

    Just in case anyone missed it, suckie is wondering whether there is any truth to the argument that granting patents to abstract principles is counter-productive to progress to the technological field in which the abstract principle is relevant.

    MTBHTDT

  166. Hey Friends, what I want or not want is not the question. I would like to know just what are the limits of congress’s power under Art. I, Section 8. We have been debating this question here for some time. The passage in Golan discussing this issue is beyond unclear.

  167. no matter the smallness of disclosure

    Nice strawman, except no one is saying that the disclosure should do anything less than support the claim, according to the rest of the law.

    All that is being said is that the artificial limit imposed by the Court is supported by a rationale that no one has questioned. That rationale should be questioned. As has been commented, the rationale is speculative and unsupported.

    I vote for Abe.

  168. …and moved it back.

    Congress took control back over. Why again is the Court involved when Congress and the constitution are clear and back in sync?

    Besides Ned, on other threads you appear to not want to give the Court this power.

  169. Regardless of whether Jefferson was behind it or not, it is clear that the 1793 did in fact remove any Executive Branch judgments on whether the invention was of sufficient merit for patenting and implicitly left it up to the courts to decide.

  170. Ned – you are just wrong on that. I cite work of others that shows that Graham and others tend to over-rely on Jefferson and his influence at the time. I’m not saying that courts should decide or not – just that it’s a stretch to say that Jefferson controlled. Indeed, Jefferson found the 1793 elimination of examination (which moved it to the courts ex post) to be a huge mistake, and examination was reinstituted in 1836.

  171. If one were to allow claims to the principles in the abstract no matter the smallness of disclosure…

    Seriously, do we even need to argue this point?

    Unless you can cite a case expressly forbidding such claiming using those exact words, then surely it is legally permitted and you have no right to suggest otherwise. It would be unprofessional to speculate.

    /patent tehbugger off

  172. Candle lit at both ends:  Read Graham v. John Deere on that.  Jefferson wanted to move the initial judgment as to what was a patentable invention into the court system.  That is what Congress did with intention in the Patent Act of 1793.

  173. If one were to allow claims to the principles in the abstract no matter the smallness of disclosure, there would be a so-called "disturbance in the Force."  Darth Vader, or his like, would sense the disturbance and visit the revenge on the Empire upon you. :)

    Seriously, do we even need to argue this point?

  174. suckie: Vacuous

    LOL. It must be difficult being you, suckie. I mean, being unable to articulate a reasonable argument about any subject. And being wrong about everything.

    Why do you bother?

    I find it fascinating (and amusing) that certain self-congratulating intellectual “leaders” in the field of patent law (at least the ones who have blogs or other high-profile platforms) are consistently wrong about the most important issues.

    Sort of like you, suckie, except you’re just a sychophant.

  175. So the bottom line still seems this: the early courts were struggling with defining invention — the degree of difference that was patentable. Further, the courts were struggling with just how abstract claims could be, and were struggling with defining limits.

    Even at an early stage, the courts were sticking their noses where they did not belong. It was, is and ever shall be (unless the constitution is changed) up to Congress and Congress alone to define invention. There is no legal basis for the Court to intrude into defining what a patentable invention is.

  176. to allow such claims would do substantial harm to the progress of the useful arts

    How exactly?

    It’s about time we stop accepting this broad general statement without any thought as to whether it is even true.

    Quite the opposite, increasing the fuel of interest to a higher grade would invigorate progress of the useful arts.

    Let’s not forget that any exclusivity granted is for a limited time and does not affect theoritical use of the knowledge gained during the patent’s lifetime.

  177. I briefly scanned your article for discussions of Story. It seems to me that in addition to being opposed to claiming the functions of machines, he was opposed to claiming principles in the abstract, and new uses of old machines or compositions. Story may have objected to patenting a process defined by using an old machine to produce something different by changing the starting material because in his view such was well within the skill in the art.

    Ditto using a well known process to produce something different by changing the starting material(s).

    The principle in the abstract idea was, in my view, fundamentally approved in Morse. There Morse had invented new machines and a code for communicating at a distance using E/M. However, when he abstracted the principle of operation of the machinery into a generality, he essentially tried to claim the principle of his machines in the abstract, something that Story had argued that one cannot do; for if such a claim were allowed, it would cover all machines and all processes for achieving the result, whether invented or described by the inventor; and to allow such claims would do substantial harm to the progress of the useful arts.

    Abstracting the operation of a machine into its principles has the same overall effect. It allows one to claim all machines that achieve the result.

    Even so, the law did even then recognize new processes that did create new manufactures.

    So the bottom line still seems this: the early courts were struggling with defining invention — the degree of difference that was patentable. Further, the courts were struggling with just how abstract claims could be, and were struggling with defining limits.

  178. Did you happen to come across a patent about public-house wenches fetching glog?

  179. If you were serious about the debate with your example, you would address the mental steps case law on point.

    Here’s all the mental steps “case law” you need to know, suckie:

      any

    patent claim that turns an otherwise non-infringing actor into a literal infringer merely because he/she thinks a certain thought about a publically disclosed fact is ineligible.

    Such a claim is effectively a claim to the mental thought itself. That’s all anyone (including you) needs to know.

    I told you this before Prometheus. I told you to take it to the bank. 9-0.

    Are you ready yet to put your example in proper context

    I already did put it in the proper context. Now put it in your pipe and smoke it.

  180. MM,

    If you were serious about the debate with your example, you would address the mental steps case law on point.

    Yet every time you bring up your example, and every time I ask you to discuss how your example fits into mental steps case law, all you do is unleash insults and disappear.

    Are you ready yet to put your example in proper context?

  181. Hi Ned –

    Yes, this is some of what Story’s cases said, but it goes deeper than that, as I detail in the article. Indeed, why can’t the way a machine operates be a series of acts that produces something? Story thought not because to do so would allow a patent on the method, and he didn’t want that.

    I wouldn’t call O’Reilly vindication, necessarily. While it is a great case for a variety of reasons, I discuss it in the article as a culmination of the misguided line of thinking. I specifically discuss O’Reilly’s citation to Neilson and why that is problematic based on differences in British law at the time.

  182. Professor Risch, IIRC, Story was more concerned with claiming the operation of a machine as a process, or all ways of achieving a result using a specific machine. In the end, I think he was vindicated in this in cases such as O’Reilly v. Morse, and a host of other cases.

    A machine is a machine. A process is a series of acts that produces something new and useful. The machine may be used in a process, but the operation of a machine is not a process.

    In Tarczy-Hornock, link to scholar.google.com, Rich reviewed these cases and came to somewhat the same conclusion: claiming the operation of a machine essentially claimed a result, not a process and not a machine. However, he then seemed to suggest that one could claim the operation of a machine without limiting the machine to a process — this started the whole controversy about patenting software without limiting the use of the programmed machine in a new process.

  183. About 40% of the methods patents between 1790 and 1793 did not use a machine or transform matter. These would all be invalid under the modern test.

    Oh my heavens!

    [clutches pearls]

    While we can debate the merits of the recent Prometheus opinion, I applaud its rejection (again) of the machine or transformation test as a way to determine patentable subject matter.

    You do understand that the MoT test was rejected primarily because in the hands of thoughtless ignorami it fails to screen out claims like those at issue in Prometheus.

    we can debate the merits of the recent Prometheus opinion,

    Please, let’s do that! Do you agree, Michael, that all claims in the form [oldstep]+[newthought] are ineligible for patenting? Do you understand why?

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