Two recent 101 Cases at the PTAB

By Dennis Crouch

Ex parte Thomsen (PTAB 2012) (App S.N. 11/314,709)

SAP’s patent claims are directed to a “method to determine statistics for a field of a database table.” In the appeal, the claim in question has three particular steps:

  • determining that the field of the table is associated with a field of a check table;
  • determining a relationship between a number of distinct values of the field in the table and a number of distinct values of the field in the check table; and
  • determining the number of distinct values of the field in the table based on the relationship and on the number of distinct values of the field in the check table.

In its recent decision, the PTAB affirmed the examiner rejection of this claim on statutory subject matter grounds. The panel wrote:

Considering the language of independent claim 1 as a whole, we agree with the Examiner that the process of claim 1 does not meet Bilski‘s “machine or transformation test” and could be performed within the human mind or by a human writing on a piece of paper. The claim recites a number of steps that are not tied to a particular machine — the claim does not recite any machine performing the functions of the steps, e.g., a processor. Nor do these steps transform data into a different state — the claim simply recites: (1) “determining that the field of the table is associated with a field of a check table;” (2) “determining a relationship between a number of distinct values of the field in the table and a number of distinct values of the field in the check table;” and (3) “determining the number of distinct values of the field in the table based on the relationship and on the number of distinct values of the field in the check table. See In re Bilski, 545 F.3d 943, 962-63 (Fed. Cir. 2008) (en banc), aff’d sub nom. Bilski v. Kappos, 130 S.Ct. 3218 (2010).

Here, to the extent any transformation takes place, the transformation is of one type of data into another type of data — (a) determining an association, (b) determining a relationship, and (c) determining a number. This is not a “transformation or reduction of an article into a different state or thing constituting patent-eligible subject matter.” In re Bilski, at 962; see id. at 963-64 (discussing patent-eligible data transformations). More importantly, the claim is entirely devoid of any mention of a “machine.” While Appellant urges that “[t]he claimed database tables, fields and values necessarily involve the use of a computer or machine” in actuality the “determining” steps could be accomplished within one’s mind or utilizing a pen and paper.

Our reviewing court guides that “a method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible under § 101.” CyberSource, 654 F.3d at 1373. Because we conclude that the scope of claim 1′s method steps covers functions that can be performed in the human mind, or by a human using a pen and paper, we conclude that unpatentable abstract mental processes fall within the subject matter of claim 1.

In the past year, the BPAI has similarly cited CyberSource in several dozen cases.

=====

Ex parte Battles (PTAB 2012) (App. S.N. 10/859,029)

HP’s patent application is directed to a “computer-readable medium that stores a program that, when executed by a digital camera causes the camera to perform” various functions associated with a histogram of light information from a photo-sensor on the camera.

The PTAB has affirmed the examiner’s Section 101 rejection – finding that the claim unduly includes patentable subject matter because the computer-readable medium might be a signal.

Appellant contends that the “computer readable medium,” as recited in claim 21, is drawn to statutory subject matter because the computer readable medium is further recited to store programs, and that transitory, propagating signals cannot store programs. We agree with the Examiner that the “computer readable medium,” as recited in claim 21 and as construed in light of the disclosure is drawn to non-statutory subject matter.

In the originally filed disclosure, Appellant discloses, “a ‘computer readable medium’ can be any means that can store, communicate, propagate, or transport the data … [and it] can be, for example, but not limited to … infrared… or propagation medium now known or later developed.” Per the originally filed disclosure, the claimed “computer readable medium” can be a transitory, propagating signal and transitory, propagating signals are ineligible. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007).

Nuijten continues to be regularly cited by the PTAB – with almost 500 citations in the past five years.

98 thoughts on “Two recent 101 Cases at the PTAB

  1. “101 integration expert … why do you bother?”

    That’s a good and valid question.

    And a fair characterization of Ned Heller, MM and IANAE.

    I post in part to provide a counter balance to their misinformation and blatant lies. Also because it seems the law I fight for is being upheld by the Supreme Court, from Deihr’s claims as a whole, to Business Methods,and Software, and Integration being part of the Official USTPO Guidance. I see progress!

    So rather than let this board get over run by the weeds I will be here fighting the good fight, calling for citations, and posting arguments based on actual case law, and holding the unaccountable, accountable for everything they say or do.

  2. “That decision is a bit lame my friends. That was boilplate stuff to enforce putting a machine in the claim.”

    It’s dissappointing to see that particular panel of the PTAB so blatantly ignore Supreme Court precedent.

  3. 101 integration expert … why do you bother?

    Honestly, I am very interested in 101 jurisprudence. However, engaging MM, IANAE, or Ned Heller on 101 issues is a waste of time.

    MM’s arguments are based on policy (i.e., software is bad) not the law.

    Ned Heller still clings to that grossly misguided decision of Benson. Notwithstanding that SCOTUS completely screwed up the facts, they still ended it when the statement “It is said that the decision precludes a patent for any program servicing a computer. We do not so hold.”

    As for IANAE, he doesn’t seem to realize that a computer operates COMPLETELY DIFFERENT than the human mind … even when it is allegedly doing the same thing. Moreover, the fact that something could be performed by the human mind doesn’t mean that it ever was performed by the human mind or would ever be performed by the human mind. Regardless, most computer-implemented inventions couldn’t be performed by the human mind because they involve processes that are only implemented on a computer.

  4. They were minimal arguments. There is a claim construction argument to be made and evidence to be presented. They were not. There is recent Federal Circuit case law that could be cited … they were not.

    There are many arguments that can be used regard B-claims that were not employed. The PTAB excels in ignoring throw away arguments.

  5. Try a substantive response preferably with citations to Court case law for a change. You will earn a lot more respect and credibility.

    But when he tries engaging in substance, he only accomplishes self-defeat, like admitting the “functionally related” core concept to the important exception to the Printed Matter Doctrine, or that “configured” is a structural term.

    The only way he can persevere in his crusades is by employing the insult route and by dust-kicking.

    Is it any wonder then that those who support such an agenda have such a hard time in NOT seeing that lying is bad for this site (at least if you want to have a credible and objective adult conversation)?

    Is it any wonder that those who engage in commercial speech avoid a full discussion wherein those commercial interests would not survive a reasoned and objective treatment of facts and law?

    Is it any wonder that content is the true casualty when agendas supplant objectivity and reason?

  6. 101 Integration Expert: Since the Prometheus Court told you 9-0, a concept integrated into a process transforms the process into an inventive application of the concept, why then can’t technology, such as software, integrated into a process transform the process into an inventive application of the software?

    MM: “As I and others have pointed out, your question is klutzy and you come across more and more stooge-like each time you ask it. ”

    101 Integration Expert: First of you there are any “others”. There is only you. And Calling the question “klutzy” and then attacking me personally for your opening argument, is no substitution for argument or an answer . Anyone can hurl insults. Try a substantive response preferably with citations to Court case law for a change. You will earn a lot more respect and credibility.

    MM: Again, the new “technology” you refer to (to the extent there is any) is never actually recited.

    101 Integration Expert: I have not referred to “new” technology. Whether software technology is new or old has nothing to do with my question. You have failed to comprehend the question or you are deliberately dishonest.

    MM: All that is recited is the concept, ..

    101 Integration Expert: I have not recited a concept. Again, you have failed to comprehend the question. Or, are you referring to some specific set of claims? Because all I have presented is a question you have yet to answer.

    MM: integrated into a process
    Assumes the conclusion.

    101 Integration Expert: How does how does the Courts use of “Integrated into a process” assume a conclusion? And a conclusion of what exactly?

    MM: There is only one “application” for software and there’s nothing inventive about that “application”

    101 Integration Expert: Who says? Seriously, do you have any authority for that statement? And please tell us what this “one” application is, and who or what authority says the application is not inventive?

    MM: and there hasn’t been anything inventive about that application since the invention of the first computer.

    101 Integration Expert: See the previous question.

    MM: If it’s a new process that results in a new transformation of matter, then the recitation of the “software” is extraneous.

    101 Integration Expert: What do you mean by extraneous?

    MM: If it’s an old process then the mere recitation of a computer is obvious per se.

    101 Integration Expert: Who says?

    MM: This is where Diehr will end up.

    101 Integration Expert: Who told you that?

    So to sum up you have failed answer the question. Instead you simply presented a lot of unsubstantiated B.S., basic supposition and dust kicking.

    You FAILED to address the fact the Prometheus Court held, a concept integrated into a process transforms the process into an inventive application of the concept.

    You FAILED to answer why the above law would not apply to “software”. Especially in view of the Prometheus Court relying on Diehr, a case that involved “integrated software”. And the fact the Court GVR’ed Ultramercial, ( another software related case) to the CAFC in view of Prometheus!

    And if it was your intention to convince me that software is not technology then you also FAILED to present any evidence for that argument, or even a cogent argument at all.

  7. MM: “Do let us know when you figure out how to “integrate” a novel mental step with a preceding old and conventional step such that it is patent eligible according to “the law”.

    101 Integration Expert: Really Malcolm? You are posting this same old fallacious straw man theory and question again???

    At any moment I expect Mr. Bloom to comment telling you to “shut up” and “move on!”

    Oh wait, Leo only makes those comments when others challenge you on such fallacious, irrelevant, straw-man arguments that have nothing to with what’s being discussed, and no basis in actual case law.

    None the less I never miss an opportunity to educate you and the vocal minority here on the actual case law of “Integration Analysis”.

    What you willfully ignore and thereby continuously fail to grasp is that “Integration” is the antithesis of “dissection” in all it’s guises, e.g. strip away and ignore, or skipping so called mental steps, etc. etc.

    And since “Integration” is the law, see ( Prometheus ) and equates to claims as a whole, see (Diehr), your various theories that focus on the patentability of individual steps can NEVER be law, unless the Supreme Court overturns it’s precedents.

    So without your microscope and laser scalpel for focusing on so called “novel mental steps” and ” preceding old and conventional steps” and whatever other kind of labels you want to create for steps/elements you do not like, and wish to ignore, what legal alternative is there?

    Well, to use the “Integration Analysis” of the Court you proceed as follows:

    If the claim(s) when viewed as a whole, add something beyond the sum of their parts taken separately, you have achieved “Integration”.

    If the claim(s) when viewed as a whole, add nothing beyond the sum of their parts taken separately, and all you have is the bare ( manifestly evident) LoN/Natural Phenomenon, Abstract idea, you started with, you have not achieved integration.

    Thus a Law of Nature can’t be patented, as was the case in Prometheus

    Thus an Abstract idea ( something performed totally within the mind) can’t be patented, as was the case in Bilski.

    Those judicial exceptions must be “integrated”.

    For your education Malcolm, what’s important to note is that no parts, elements or steps are ignored when determining “integration”.

    You can have your so called “novel mental steps” and ” preceding old and conventional steps” ANY steps in ANY order whatsoever, as long as those steps when viewed as a whole, add something significant beyond the sum of their parts taken separately.

    And that my friend is called “Integration” and it’s the law!

    “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.” 12 MAYO COLLABORATIVE SERVICES v. PROMETHEUS LABORATORIES, INC. Opinion of the Court (Emphasis Added)

  8. And you, Ned and MM are twisted enough in posting misleading statements to be the same person.

    What’s your point?

  9. I still wish Professor Crouch would come out and explicitly say that lying is not allowed on Patently O.

    He has.

    It is.

    What is apparently lacking is the vigilant maintenance of that rule. And its sister rule regarding views expressed being strictly of the personal kind.

    I have offered my suggestion as to this problem on the link to patentlyo.com thread (and even there, my suggestions were not new, as I have consistently pointed out the true nature of the blight – agenda-driven misleading content).

    As I noted, the driver of the problem is a very specific agenda, one that will not rest nor – apparently – obey the rules. As I posted on link to patentlyo.com that agenda is relentless.

    Expecting an honor code to work, for people to self-police themselves and post in conformance to stated rules and then to do nothing when obvious violations of those rules are pointed out – and basically admitted to by the perpetrators – seems to align with the colloquial definition of insanity.

    MM has recently admitted to two positions that should place his continued polemics under scrutiny of the stated rules: the “functionally related” aspect and the “configured to” aspect. He does know that these aspects are law. His posts to the contrary – unless properly stated as proposed changes to law or the like – should be treated as the purposefully misleading distortions that they are and should be treated as the violations of posting that they are.

  10. anon said: You tell me – I haven’t seen you yet apply the USPTO guidance as 101 Integration Expert keeps on asking you to.

    I know you know where to find them. I just cannot figure out why you haven’t read them yet. (because if you have read them, and you are still arguing against 101 Integration Expert’s view, then you MUST be a liar)

    MM won’t apply the USPTO guidelines on “Integration”, despite being the first to post the link.

    MM won’t answer the “Integration” question on software as it relates to those guidelines.

    Therefore there is little choice but to conclude MM, A.K.A. Malcolm Mooney is a liar.

    I still wish Professor Crouch would come out and explicitly say that lying is not allowed on Patently O.

    Followed up by specifically asking MM to stop baiting and stick to substantive posts on the law.

    You suppose MM would change his behavior then?

  11. …I am curious too – and have been for a lot longer.

    In fact, since you first posted the link to the USPTO guidance.

    Thank you – by the way – for all the pleasure from that post (and your many many many many self-defeating posts since then).

  12. You tell me – I haven’t seen you yet apply the USPTO guidance as 101 Integration Expert keeps on asking you to.

    I know you know where to find them. I just cannot figure out why you haven’t read them yet. (because if you have read them, and you are still arguing against 101 Integration Expert’s view, then you MUST be a liar)

  13. Is the USPTO you are referring to the same USPTO that just tanked the claims in Ex Parte Thomson under 35 USC 101?

    Just curious.

  14. why your clutzy question isn’t worth addressing

    The Court had no problem addressing it.

    Neither did the USPTO.

    In fact, it was you that ever so giddy first posted the link to the USPTO addressing of this “clutzy” question post-(9-0 Baby)-Prometheus – even before you bothered to read what the USPTO was saying.

    Your self-defeat in that matter was beyond clutzy, it was down right oafish.

    I do hope you realize that until you actually own up to how the Court and the USPTO align with 101 Integration Expert’s position and either take his challenge or admit to his being correct, that this response of his – no matter how you try to denigrate it – is a fully appropriate and devastating response to your desired ways (with due apologies to the unfortunate Mr. Bloom, who must read about your correction yet again).

  15. I have no idea…

    Bold face lie, as you yourself have made the “House” analogy in the past.

    Prof. Crouch – must we really put up with bold faced lies?

    *click*

    Yet again showing your maturity MM. Yes, you decision not to listen does not hide the fact that you have understood these positions and that you have admitted to the underlying facts of them – before you *click* your way with more non-substantive banalities, check out the recent exchanges between yourself, David Stein and myself on some recent threads for some prime MM self-defeating admissions when you last attempted some substantive discussion.

  16. LOL right back at you – where does it say that Supreme Court case law is the only case law that matters?

    Point in fact, the legislative law welcomes this. If you can show me elsewise, please do so.

  17. “Let me know when you’ve figured out a way to “integrate” that mental step with the old steps, 101E. Just show me one claim in the form [oldstep]+[newthought] that is eligible under 101 because it is “integrated.”

    Ummm …Why?

    Seriously, what is the relevance?

    Now how about you answer a relevant question based on actual case law such as the following: Since the Prometheus Court told you 9-0, a concept integrated into a process transforms the process into an inventive application of the concept, why then can’t technology, such as software, integrated into a process transform the process into an inventive application of the software?

  18. 101 Integration Expert: Diehr’s claims were considered as a whole. … That’s the law now

    MM: Right. Except for that 9-0 case where the Supreme Court told us that when a claim recites a step of thinking about a “natural phenomenon” that we need to look at whether the only other steps are “old and conventional” in which case the claim is ineligible.

    101 Integration Expert: I need that exact quote. Proper Pin Cite please?

    ::silence::

    Oh..silly me . This is MM and MM doesn’t do pin cites. He just makes sheet up. Carry on!

  19. 101 Integration Expert:There was no mental steps test in Diehr.

    MM:Now you’ve completely contradicted yourself.

    101 Integration Expert: Let me say it again. There was no mental steps test in Diehr. What’s so hard for you to understand about this fact? Diehr’s claim were patent eligible subject matter because the formulae was integrated into the process, thus transforming the process into an inventive application of the formulae. Please read Prometheus.

    Now, how about answering the question. Since the Prometheus Court told you 9-0, a concept integrated into a process transforms the process into an inventive application of the concept, why then can’t technology, such as software, integrated into a process transform the process into an inventive application of the software?

  20. Seriously? The “House” argument?

    I have no idea what you’re talking about.

    you say 101 Integration Expert lacks integrity

    Your twin brother. Yes.

    you already

    *click* Yawn. Give your brother a chance to answer, mkay?

  21. and how those graphite deposits

    You might check out case law on “deposits” on the outside of a glass, functionally related to said glass and take a proper measure of that.

  22. since the invention of the first computer

    …the first computer…

    Seriously? The “House” argument? And you say 101 Integration Expert lacks integrity?

    Listen MM, you already self-defeated by admitting the functionally related aspect to the important exception to the printed matter doctrine. ANything further from you is just dust-kicking and outright lies.

  23. As I and others have pointed out, your question is klutzy and you come across more and more stooge-like each time you ask it. Here’s another attempt (that will fail) to inspire you to try a new salad dressing.

    technology, such as software

    Again, the new “technology” you refer to (to the extent there is any) is never actually recited. All that is recited is the concept, i.e., the desired functionality of the object or (in the case of novel computer instructions) the abstract manipulation of information.

    integrated into a process

    Assumes the conclusion.

    transform the process into an inventive application of the software

    There is only one “application” for software and there’s nothing inventive about that “application” and there hasn’t been anything inventive about that application since the invention of the first computer (a type of device which actually is eligible for patenting, provided it’s claimed properly).

    If it’s a new process that results in a new transformation of matter, then the recitation of the “software” is extraneous. If it’s an old process then the mere recitation of a computer is obvious per se. This is where Diehr will end up.

    Just for fun, let me ask you a question that I’m certain you will be unable to answer: is it possible according to your understanding of patent law for someone to obtain a patent on a piece of paper that is identical to an old piece of paper except that the new piece of paper has some graphite deposits on it? Please answer the question yes or no, including an explanation of any assumptions you need to make to answer the question (assumptions, e.g., such as the nature of the graphite deposits and how those graphite deposits are described in the claim). Thanks.

  24. aYeah right like a speed limit with a specific number is not a law.

    There is no law that says I can’t drive 193.12972 miles per hour. Good luck finding one.

    There are laws that can be applied to me that prevent such behavior (as I already told you) but there is no law that says I can’t drive 193.12972 miles per hour.

    Does this “reasoning” sound familiar, 101E? You and your buddy should be intimately familiar with it.

    Do let us know when you figure out how to “integrate” a novel mental step with a preceding old and conventional step such that it is patent eligible according to “the law”. I won’t hold my breath because, unlike you, I know it can’t be done. Unlike you, I’m not afraid to admit that or to advise others of that irrefutable fact.

  25. I wrote: You need to recognize that being “most on point” does not mean “directly on point”. I know that will be a very difficult concept for you to process

    Prediction confirmed.

  26. MM:”It’s about “understanding the law” and its logical implications. ”

    Well then, by all means please demonstrate your understanding by answering the following question:

    Since the Prometheus Court told you 9-0, a concept integrated into a process transforms the process into an inventive application of the concept, why then can’t technology, such as software, integrated into a process transform the process into an inventive application of the software?

  27. ” so clearly you had no idea what you were talking about or you were simply trolling.”

    Classic self projection. Especially nothing you have stated above is true.

  28. “And there’s “no such law” that says I can’t drive 193.12972 miles per hour.”

    Yeah right like a speed limit with a specific number is not a law.

  29. “Anytime you’re ready to admit that no claim in the form [oldstep]+[newthought] can be “integrated” in manner sufficient to pass 101″

    There is no such law.

    Right. And there’s “no such law” that says I can’t drive 193.12972 miles per hour. But if I do drive that fast, I will be arrested and rightfully so.

    It’s about “understanding the law” and its logical implications. You seem to have a real problem with that, in addition to your inability to demonstrate a microgram of integrity here.

  30. There was no mental steps test in Diehr.

    Now you’ve completely contradicted yourself. Earlier you asserted that every process claim had a mental step. And then later you moved the goalpost (without admitting you had mispoken) and you asserted that every process claim that involved a human had a mental step.

    So what’s your position now? That Diehr is the only process claim involving a human that doesn’t include a mental step?

    Diehr’s claims were considered as a whole. … That’s the law now

    Right. Except for that 9-0 case where the Supreme Court told us that when a claim recites a step of thinking about a “natural phenomenon” that we need to look at whether the only other steps are “old and conventional” in which case the claim is ineligible.

    Let me know when you’ve figured out a way to “integrate” that mental step with the old steps, 101E. Just show me one claim in the form [oldstep]+[newthought] that is eligible under 101 because it is “integrated.”

    Last time you were asked to do this you pointed me to Diehr. But now you say that Diehr has no mental step so clearly you had no idea what you were talking about or you were simply trolling.

  31. “Anytime you’re ready to admit that no claim in the form [oldstep]+[newthought] can be “integrated” in manner sufficient to pass 101″

    There is no such law.

    End of discussion.

  32. MM: “By the way, 101E, have you figured out yet what step in Diehr’s process claim was construed to be a mental step?”

    There was no mental steps test in Diehr.

    Diehr’s claims were considered as a whole.

    That was the law then.

    That’s the law now.

  33. “Sorry, how is any of this relevant to whether a computer is performing an abstract method when it’s doing what would be an abstract method if a person were doing it?”

    My point is that if what a human being is doing can be done more efficiently by a computer executing a program, that alone is NOT an indicator of an abstract method/process. Why?

    There is a transformation that takes place with the programming of a computer that takes expression from the affective to the cognitive and outcomes from the subjective to the objective.

    Understanding the differences will enable you to deal with inventions in the digital age, and ultimately see the well placed logic behind the law that says, a concept integrated into a process transforms the process into an inventive application of the concept.

    Once you understand the above it does not take any leap whatsoever to answer the question..

    Since the Prometheus Court told you 9-0, a concept integrated into a process transforms the process into an inventive application of the concept, why then can’t technology, such as software, integrated into a process transform the process into an inventive application of the software?

  34. I have yet to see a computer paint an original impressionist painting. Write an original poem, sonnet, or song.

    Yet another comment that illustrates perfectly why it is impossible to take 101E seriously.

    By the way, 101E, have you figured out yet what step in Diehr’s process claim was construed to be a mental step? Anytime you’re ready to admit that no claim in the form [oldstep]+[newthought] can be “integrated” in manner sufficient to pass 101, you know where to find me.

  35. I have yet to see a computer paint an original impressionist painting. Write an original poem, sonnet, or song. Or listen and reflect the feelings and emotions of another human being.

    Computers have definitely done at least some of those things. I couldn’t say for sure if they’re stylistically consistent with the impressionists. Also, you didn’t specify what type of song it would have to be to count as abstract.

    Also, a sonnet is a kind of poem, and so are most songs. But thanks for your exhaustive list of all the abstract processes in the world. I’m sure the Federal Circuit will be thrilled.

    Sorry, how is any of this relevant to whether a computer is performing an abstract method when it’s doing what would be an abstract method if a person were doing it? What if you made the computer do it as slowly as a human would?

  36. Deliberate misunderstanding is a most pernicious thing.

    Just look at the fifty year old article software thread.

  37. “Malcolm, but the discussion of a computer doing the abstract method is what gives one pause.”

    Mr, Heller, I would argue that a computer executing code is not performing an abstract method.

    I have yet to see a computer paint an original impressionist painting. Write an original poem, sonnet, or song. Or listen and reflect the feelings and emotions of another human being. All abstract liberal arts.

    None the less you seem to want to extricate all the technology of certain inventions and only look at the abstract concept on which it was inspired, and then declare that the invention in patent ineligible subject matter.

    Well to paraphrase the Diehr Court, “To accept this analysis would, if carried to its extreme, make all inventions unpatentable, because all inventions can be reduced to underlying principles of nature ( concepts) which, once known, make their implementation obvious.”

    Whether the two recent 101 cases at the PTAB are Patent Eligible I have not judged. But for certain, “Integration, from the devices inherent, down to the circuits themselves, will transform the process into an inventive application of the concept. On this there can be no dispute!

  38. “I think it’s far more likely that Diehr itself will be cabined even more severely to its facts.”

    Diehr has not been cabined at all.

    And you know this. This type of willful misconstruing of the law is shameful.

    Professor Crouch should make a rule for lying not being allowed on Patently O

  39. MM Said: “You need to recognize that being “most on point” does not mean “directly on point”.

    Since Diehr is the ONLY Supreme Court case in the last 30 years, and THE ONLY Case in the Digital Age, to tell us what “IS” patent eligible subject matter , I would say you can’t get more on point than that!!!

    No wonder the Bilski Court explicitly said it’s precedents,namely Flook, and Benson, stand for no more than the principles in Dier, and the Prometheus Court literally called Diehr the case MOST ON POINT!

    What more will it take for you to understand this?

  40. “If only the USPTO would apply this law a bit more regularly and consistently we could start returning to sane patent system again.”

    The USPTO could apply the MoT more regulary if we all lived in this was 1850!

    What you and other fans of MoT fail to recognize is the test is for and limited to inventions of the iron age, which are still patent eligible subject matter.

    What the test does not do is limit inventions of complex information processing of the digital age that of the iron age.

    Integration is the proper test/analysis for invention in the digital age.

    That is why the Court struck down the MoT as the sole test in Bilski and exalted “integration” in Prometheus

  41. Mr. IANAE:

    Your attempt to misrepresent the holding of the Court, and mockery of the original question, will not in any way diminish the question or make it go away.

    As it stands today, no one in any of the anti software threads can reconcile their various policy positions for the elimination of software patents with The Diehr Courts use of “Integration Analysis” to uphold as patent eligble subject matter, a process that simply uses software, and a digital computer for making a well known rubber curing method more efficient.

    Add to that fact that the Prometheus Court, that had every opportunity and right to put a gloss on the Diehr decision, if not outright overturn it, in turn exalted Diehr!

    Indeed the Prometheus Court explicitly upheld Diehr’s use of “Integration” as the reason the claims in that case are patent eligible subject matter.

    The Court then GVRed Ultramercial, a computer/software case back to the CAFC in view of Prometheus clearly setting up the opportunity to once and for all legally silence all anti software ( and business methods too ) critics.

    So, the legitimate question remains that no anti-softeware proponent can answer.

    Since the Prometheus Court told you 9-0, a concept integrated into a process transforms the process into an inventive application of the concept, why then can’t technology, such as software, integrated into a process transform the process into an inventive application of the software?

    ::Sound of Crickets Chirping::

  42. Mr. Bloom:

    It is your right to “tuck and run”. As it is your right to tell people to shut up, as you have done explicitly and implicitly when perhaps your views or knowledge of patent law has been threatened.

    But your position of “Integration” not being “worth it” is clearly out of line with the Courts view on the most important, and hotly contested section of patent law today.

    As you may recall, the Court remanded Ultramercial, a technological process that uses computers and software, back to the CAFC in view of Prometheus.

    Prometheus, a case whose 9-0 ruling was built on the foundation of Deihr’s use of “Integration” to explicitly determine what is patent eligible subject matter.

    And now you want to “tuck and run”. Just like Ned Heller. Well we all know why Mr. Heller refuses to discuss the Courts Integration Analysis. He is anti software and the legal application of “Integration” simply does not aide in eliminating the broad swath of software technology as patent eligible subject matter.

    So he skips it!

    And now you follow .

    Which speaks volumes as to your own agenda as well.

    It isn’t worth it, indeed!

  43. Don’t worry IANAE, there is no shortage of those who would kick dust up over this issue – or did you miss the good Professor’s post on the fifty year old article?

  44. I’m going to tuck and run, 101. It isn’t worth it.

    Don’t quit now. We were so close to having an adult discussion on whether software that is used in a process can “transform” the process into a process that uses software. A couple more months, and we might even have discovered the relevance to patent law.

  45. IANAE: “Patent them all again now that they’ve surpassed the previous limit and therefore represent progress?”

    Well, Mr. IANAE, if the only difference between your method/process and the prior art is the speed of arriving at the end result, then I do believe you may have a challenge at 102, and 103.

    But for certain, this will not change the fact that a judicial exception, combination of technology, or concept integrated into a process transforms the process into an inventive application of the judicial exception, combination of technology, or concept, and thus clears the threshold of 101.

  46. Leopold Bloom said: “It can, but doesn’t necessarily.”

    Mr. Bloom:

    Your statement indicates that you believe there can be at least one scenario when technology, such as software, integrated into a process can’t transform the process into an inventive application of the software.

    If so will you please provide such an example?

    As I do believe the Court has never held such.

  47. especially when by “proper” you mean “in accordance with my views”?

    When you work hard to understand the law and what is proper, work hard to align “your view” with that proper understanding (which, by the way is NOT synonymous with how I would draft the law myself), there generates a certain affection – niche or otherwise- for that law. If you feel this below your radar (and yet you are concerned enough to post to question the wrong people, your posts most naturally seem suspect.

    In other words, you STILL are questioning the wrong people and in essence (albeit more politely this time) telling the wrong people to shut up.

    Aim your arrows (and yes you are shooting them) at the right targets.

  48. Why are not more people concerned enough with the proper presentation of the law?

    Uh, perhaps because it’s simply not very important that anonymous commenters on a relatively obscure special-interest website properly present the law, especially when by “proper” you mean “in accordance with my views”?

    (No offense, Dennis. I think it’s a wonderful special-interest website, but it’s no Buzzfeed or link to corgiaddict.com .)

  49. Maybe we care that the law is properly presented.

    Shouldn’t that be enough?

    Maybe a better question is: Why are not more people concerned enough with the proper presentation of the law?

  50. MM: Unfortunately, nobody really knows what the phrase “integrated like the formulae in Diehr” means. Even if you (of all people).

    As has been pointed out to you before. Everyone that has read and understood the Prometheus Courts 9-0 decision, the Office Official Guidelines, and the MPEP sections on “Integration” knows what “Integration” means within the context of patent law.

    Here, I will be glad to explain it to you again.

    When the claims viewed as a whole and as an ordered combination offer more than the parts do separately, you have integration. That’s it.

    Please read the Prometheus Court explaining why the manifestly evident, bare Law of Nature, even with additional post solution steps, are not “integrated”.

    “To put the matter more suc­cinctly, the claims inform a relevant audience about certain laws of nature; any additional steps consist of well­ understood, routine, conventional activity already engaged in by the scientific community; and those steps, when viewed as a whole, add nothing significant beyond the sum of their parts taken separately.” MAYO COLLABORATIVE SERVICES v. PROMETHEUS LABORATORIES, INC.

    Now compare that to the Prometheus Court explaining why Diehr’s claims are “integrated”.

    “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 [Read as Integration] 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 [Read as Integrated] 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. 12 MAYO COLLABORATIVE SERVICES v. PROMETHEUS LABORATORIES, INC. ( Emphasis Added)

    Now that you know what the Court means when it applies “Integration” to claims, please answer the question.

    Since the Prometheus Court told you 9-0, a concept integrated into a process transforms the process into an inventive application of the concept, why then can’t technology, such as software, integrated into a process transform the process into an inventive application of the software?

  51. A bit of a strawman IANAE, as there is only a single transition point between the human and machine capability scale.

    Your question is more akin to whether or not the succeeding improvement (from machine to machine) is enough to warrant a patent. Existing law suffices to answer that question.

  52. You must have your thrusting pinnacles confused (again).

    I think I dropped them in the parking lot. LOL. What a piece of work.

  53. That’s quite a movement from being “Case Most On Point”

    There’s no “movement” at all. You need to recognize that being “most on point” does not mean “directly on point”. I know that will be a very difficult concept for you to process. Maybe take a time-out and think about it before shooting off another vacuous comment.

    In the meanwhile, let’s pause a moment to remind everyone (again) that the Dierhbots (which included you, another commenter who posed under the moniker “Actual Inventor” and who has probably renamed himself “101 Integration Expert”, in addition to some badly misguided Federal Circuit judges) were adamant that the Prometheus claims must be patent eligible because they included eligible subject matter and any attempt to categorize a claim element as “old” or “new” amounted to “dissection” which was The Worst Thing Ever.

    I (and others) were equally adamant that this was not the case and could not be the case unless (key point here) claims such as Prometheus’ were held to be per se anticipated/obvious (by virtue of the ineligible subject matter being ignored during the 102/103 analysis) or per se unenforceable. All of this was fought tooth and nail by the Diehrbots, who were handed a defeat that they struggle with to this day. The defeat was so bitter, in fact, that these same commenters like to imagine that they never held their simplistic and now forever-rejected views about the eligiblity of claims reciting both eligible and ineligible subject matter. But the truth is there for all to see:

    link to patentlyo.com

    link to patentlyo.com

    link to patentlyo.com

    [reminder: anon used to post under the nym "The Shilling Shall Continue" among others]

  54. 101 Integration Expert: Bilski started his claims with a “manifestly evident” judicial exception, (mathematical formula is this case)

    MM: So did Diehr.

    101 Integration Expert: You are wrong. Had Diehr’s claims indeed began with a “manifestly evident”, meaning bare, mathematical formula, in this case the Arrhenius Equation, his claims would have been patent ineligible.

    While this was the view of the minority, as expressed by Steven’s in his dissent, the majority in the Diehr Case ruled the claims were to a process of curing rubber. Namely because the claims began with the rubber curing process and “integrated” the mathematical formulae into the process as a whole. This is how the Prometheus Court has interpreted Diehr. Also, please read Diehr itself:

    “[Footnote 15]
    The dissent’s analysis rises and falls on its characterization of respondents’ claims as presenting nothing more than “an improved method of calculating the time that the mold should remain closed during the curing process.” Post at 450 U. S. 206-207. The dissent states that respondents claim only to have developed “a new method of programming a digital computer in order to calculate — promptly and repeatedly — the correct curing time in a familiar process.” Post at 450 U. S. 213. Respondents’ claims, however, are not limited to the isolated step [ Non Integrated ] of “programming a digital computer.” Rather, respondents’ claims describe a process of curing rubber beginning with the loading of the mold and ending with the opening of the press and the production of a synthetic rubber product that has been perfectly cured — a result heretofore unknown in the art. See n 5, supra. [Diamond v. Diehr, 450 U.S. 175 (1981)]

    So with that fact being established it brings us back to the original question. Please answer. Since the Prometheus Court told you 9-0, a concept integrated into a process transforms the process into an inventive application of the concept, why then can’t technology, such as software, integrated into a process transform the process into an inventive application of the software?

  55. The fact that we see the same challenge from 101 IE is based entirely on the post-ignore-retread style of selective individuals who really have no interest in holding an adult conversation on the matter.

    If they have no interest in holding an adult conversation on the matter, why do you and 101IE continue to insist on conversing with them?

  56. Leopold,

    Respectfully, you are asking the wrong person to move on. You should be asking those to whom 101 Integration Expert is responding to. The fact that we see the same challenge from 101 IE is based entirely on the post-ignore-retread style of selective individuals who really have no interest in holding an adult conversation on the matter.

  57. Automation to the point, it surpasses the limits of human performance is a benefit to society and from a policy perspective is as worthy of IP protection as a new nail or hammer, or process for their combined use.

    What happens to all those “methods” with fastness-based patentability when someone goes and invents an even faster computer? Patent them all again now that they’ve surpassed the previous limit and therefore represent progress?

  58. All that will remain of Diehr is the slim, trivial proposition that we all agree on: the mere identification of ineligible subject matter in a claim is not sufficient to render the claim per se ineligible.

    That’s quite a movement from being “Case Most On Point” in your much (over)-celebrated (and self-defeating) 9-0 Prometheus case.

    Reminds me of the predictions prior to the SC Bilski case and how Deihr was going to be over-ruled and all the Diehrbots crushed.

    You must have your thrusting pinnacles confused (again).

  59. So, my question to you and others is why then can’t technology, such as software, integrated into a process transform the process into an inventive application of the software?

    It can, but doesn’t necessarily.

    Now, can we move on?

  60. Hello Mr. IANAE:

    A computer executing software, whose end result is to automate human behavior, is called progress.

    Automation to the point, it surpasses the limits of human performance is a benefit to society and from a policy perspective is as worthy of IP protection as a new nail or hammer, or process for their combined use.

    From an existing Patent Law perspective, the Prometheus Court told you 9-0, a concept integrated into a process transforms the process into an inventive application of the concept. So, my question to you and others is why then can’t technology, such as software, integrated into a process transform the process into an inventive application of the software?

  61. Hello Mr. IANAE:

    A computer executing software, whose end result is to automate human behavior, is called progress.

    Automation to the point, it surpasses the limits of human performance is a benefit to society and from a policy perspective is as worthy of IP protection as a new nail or hammer, or process for their combined use.

    From an existing Patent Law perspective, the Prometheus Court told you 9-0, a concept integrated into a process transforms the process into an inventive application of the concept. So, my question to you and others is why then can’t technology, such as software, integrated into a process transform the process into an inventive application of the software?

  62. Regardless, the applicant didn’t help things out by submitting a minimal argument.

    Maybe, but they made the argument pretty clearly, twice. I don’t know what else they were supposed to do.

    As to the rest of your comment, I hear you. I don’t normally draft Beauregard claims, but when I’m prosecuting someone else’s I simply add the magic words. I think HP was willing to sacrifice the Beauregard claims and took a shot with the “storing” argument for fun. Maybe next time.

  63. Bilski started his claims with a “manifestly evident” judicial exception, (mathematical formula is this case)

    So did Diehr.

    so adding extra steps with a machine, such as a computer could not save it, as such addition steps are called post solution activity.

    Great to know.

    had the formula been integrated like the formulae in Diehr

    Unfortunately, nobody really knows what the phrase “integrated like the formulae in Diehr” means. Even if you (of all people) were in possession of that knowledge, I respectfully submit that you would never be capable of articulating the answer in a coherent manner.

    Keep thrusting, though. Maybe you’ll reach the pinnacle someday. I think it’s far more likely that Diehr itself will be cabined even more severely to its facts. All that will remain of Diehr is the slim, trivial proposition that we all agree on: the mere identification of ineligible subject matter in a claim is not sufficient to render the claim per se ineligible.

  64. “In my view, this is a logical argument, which the Board ignored.”

    Ignoring arguments is something that the PTAB does ALL THE TIME. They’ve been trained to reject (affirm rejections) of Beauregard claims under 101 if they don’t include the magical phrase “non-transitory.” Of course, had the actually done a claim construction of the phrase “storage” or “storing,” they would have realized that these terms necessarily EXCLUDE transitory, propagating signals.

    Regardless, the applicant didn’t help things out by submitting a minimal argument.

  65. MM: ” It’s an explanation as to just one of the reasons why your clutzy question isn’t worth addressing.”

    Aww..but you have addressed the question. What you have failed to do is answer it. And since you can’t invalidate the question, please answer now.

    Since the Prometheus Court told you 9-0, a concept integrated into a process transforms the process into an inventive application of the concept, why then can’t technology, such as software, integrated into a process transform the process into an inventive application of the software?

  66. It’s a clue and a good clue. But it is neither sufficient, nor necessary.

    That, my friend, is the law.

    All else from you is dust-kicking.

  67. MM: “I mean, look at what happened to Bilski. If only he had recited a computer in his claims.”

    Hello MM:

    Bilski started his claims with a “manifestly evident” judicial exception, (mathematical formula is this case) so adding extra steps with a machine, such as a computer could not save it, as such addition steps are called post solution activity. However had the formula been integrated like the formulae in Diehr, then Bilski would have at least passed the threshold at 101.

    See Research Corp, and Alice for Manifestly Evident. See Flook for Extra ( pre and post solution activity). See Diehr and Prometheus for “Integration”.

    Now, please answer the question. Since the Prometheus Court told you 9-0, a concept integrated into a process transforms the process into an inventive application of the concept, why then can’t technology, such as software, integrated into a process transform the process into an inventive application of the software?

  68. MM: “They told YOU that, 101. You received the transmission through your fillings. Don’t you remember?”

    Hello MM:

    The Court told EVERYONE, 9-0, through MAYO COLLABORATIVE SERVICES v. PROMETHEUS LABORATORIES, INC.

    Here is the exact passage from the Syllabus of the Prometheus case so you may read it for yourself.

    The Prometheus Court relying on the controlling precedent that is most on point for what “IS” patentable subject matter quotes Diehr, 450 U. S., at 177–179,…”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. 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.] (Emphasis Added)

    So my question is valid. Now will you please answer…

    Since the Prometheus Court told you 9-0, a concept integrated into a process transforms the process into an inventive application of the concept, why then can’t technology, such as software, integrated into a process transform the process into an inventive application of the software?

  69. If you read Benson carefully you’ll find that the machine or transformation test comes from dicta in Benson.

    It’s a very reasonable test. It’s major shortcoming is that it misses certain problematic claims that “run around” the MoT test by adding insubstantial (old, conventional) transformative subject matter to otherwise ineligible subject matter. The Supreme Court in Bilski and especially Prometheus provided the critical additional tools for identifying these claims and crushing them into dust. More to come!!!

  70. “Determining that a field in a table is associated with another field is “technology”?”

    That’s not an answer to my question.

    You’re right. It’s an explanation as to just one of the reasons why your clutzy question isn’t worth addressing. I’m still waiting for you to tell us all which step in Diehr’s process was construed to be a mental step.

  71. “Determining that a field in a table is associated with another field is “technology”?”

    That’s not an answer to my question.

    “Now watch 101E change the subject”

    That’s what you just did.

    Now please go back and answer the question I asked.

    The Prometheus Court told you 9-0, a concept integrated into a process transforms the process into an inventive application of the concept, why then can’t technology, such as software, integrated into a process transform the process into an inventive application of the software?

  72. technology, such as software

    LOL. Determining that a field in a table is associated with another field is “technology”?

    This pathetic posturing is exactly why the software patent table pounders are doomed to failure. Now watch 101E change the subject …

  73. the Prometheus Court told you 9-0, a concept integrated into a process transforms the process into an inventive application of the concept

    They told YOU that, 101. You received the transmission through your fillings. Don’t you remember?

    software, integrated into a process

    Instructions for a computer, integrated into a process for determining abstract relationships between arbitrarily named abstractions. Yes, I’m sure the Supreme Court will approve! I mean, look at what happened to Bilski. If only he had recited a computer in his claims.

    LOL.

  74. “Welcome rebirth of MoT even in the face of what the Supreme Court decision actually said (in of the two 9-0 positions from that Court).”

    Anon, it is incredulous that this board discusses the MoT as if the CAFC application of that test was upheld by the Court in Bilski as the sole test.

    While at the same time, even Professor Crouch remains silent on Prometheus use of Diehr’s “Integration Analysis” as well as Prometheus declaration as Diehr being the case most on point for what is a patent eligible subject matter.

    “And none of the intelligensia cared enough to point out this slightly important item?”

    Surely we are not talking about the likes of MM, Ned Heller and company whome will not even recognize the 9-0 holding of the Supreme Court in Prometheus and our controlling Court case law in Diehr.

    To this day MM argues that Diehr’s claims as a whole is no longer the law. While Ned Heller won’t attempt to broach the topic of “Integration Analysis”

    intelligentsia yeah right, dishonest intelligentsia!

  75. MM: Perhaps then you would answer this question that your friend, Mr. Heller ducks and runs from.

    The Prometheus Court told you 9-0, a concept integrated into a process transforms the process into an inventive application of the concept, why then can’t technology, such as software, integrated into a process transform the process into an inventive application of the software?

  76. MM, MoT was struck down as the sole test by the Supreme Court of the United States of America.

    Now, the Prometheus Court told you 9-0, a concept integrated into a process transforms the process into an inventive application of the concept, why then can’t technology, such as software, integrated into a process transform the process into an inventive application of the software?

  77. Mr. Heller, the Prometheus Court told you 9-0, a concept integrated into a process transforms the process into an inventive application of the concept, why then can’t technology, such as software, integrated into a process transform the process into an inventive application of the software?

  78. USPTO would apply this law a bit more

    Welcome rebirth of MoT even in the face of what the Supreme Court decision actually said (in of the two 9-0 positions from that Court).

    And none of the intelligensia cared enough to point out this slightly important item?

    Prof. Crouch, just goes to show that waiving that red cape really does make the bull(shtt) fly fast and furious.

  79. awww

    “>http://1.bp.blogspot.com/-Wz3r_fS74iI/UGjLTynbdMI/AAAAAAAAEy8/CgZEvvwojxQ/s1600/tumblr_maoi7bLamr1qzcv7no1_400.gif&sa=X&ei=PdOFUMftBbC70QHutYDYAw&ved=0CAkQ8wc&usg=AFQjCNFGEBgRKnfkJ6cn6hOeYyzSBLrTiA”>

  80. If you read Benson carefully you’ll find that the machine or transformation test comes from dicta in Benson.

  81. This was not the primary issue in the appeal, and it appears that HP put very little effort into this aspect.

    That said, I thought the Board’s decision on this question was disappointing. The specification indeed listed a number of things that could be considered “computer readable” media, including signals. But the specification did not say that all of these things were capable of storing a computer program. The claims were limited to computer-readable media that stored a computer program, which, Appellant argued, expressly excludes transitory signals. In my view, this is a logical argument, which the Board ignored. I’m no fan of Beauregard claims, but I like laziness on the part of the Board even less.

  82. IANAE, you get it.  When I claim the computerized method of calculating the amount of time one's stay in purgatory is reduced in response to a contribution, I am claiming anything that is even remotely patentable subject matter.  It is the very fact that the PTO does not get this is the problem.

  83. Maybe someday they’ll make these POWERFUL COMPUTER BRAINS really, really small so you can determine the relationship between fields in a table IN THE PALM OF YOUR HAND. Eventually you’ll be able to determine the relationship between fields in a table super, super fast while you’re relaxing in your flying car, or even while you’re talking to your Momcubator(TM) through your ComLenses(TM).

  84. Only two and half years to get a decision. That decision is a bit lame my friends. That was boilplate stuff to enforce putting a machine in the claim. It was appealed back in April of 2010.

  85. the discussion of a computer doing the abstract method is what gives one pause.

    Abstract method + faster = abstract method, only faster

    Why does this give one pause? What am I missing here?

  86. it is interesting that the PTO still issue B-claims of any ilk

    Indeed. But when Kappos hands out B-claims he probably imagines he’s just handing out lottery tickets.

    Some of the glaring problems with that approach are (1) those lottery tickets are generally going to the people who need them the least and (2) the process consumes finite resourches which affects users of the system who aren’t the lucky recipients of Kappos’ malpractice.

  87. Ned: the discussion of a computer doing the abstract method is what gives one pause.

    Agreed. Adding a limitation about a “computer” performing this laughably abstract baloney should not change a darn thing.

  88. Malcolm, but the discussion of a computer doing the abstract method is what gives one pause.

    Benson was decided nearly 40years ago, and still it is not followed by the PTO or for that matter it appears by the Federal Circuit.

  89. Appellant discloses, “a ‘computer readable medium’ can be any means that can store, communicate, propagate, or transport the data … [and it] can be, for example, but not limited to … infrared… or propagation medium now known or later developed.” Per the originally filed disclosure, the claimed “computer readable medium” can be a transitory, propagating signal and transitory, propagating signals are ineligible. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007).

    Typical example of j-nk in the backlog, abhorrent j-nk that it takes two seconds for anyone with minimal knowledge of patent law to decimate. What was the applicant thinking when they appealed this case?

  90. to the extent any transformation takes place, the transformation is of one type of data into another type of data – (a) determining an association, (b) determining a relationship, and (c) determining a number. This is not a “transformation or reduction of an article into a different state or thing constituting patent-eligible subject matter.” In re Bilski, at 962; see id. at 963-64 (discussing patent-eligible data transformations).

    If only the USPTO would apply this law a bit more regularly and consistently we could start returning to sane patent system again.

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