157 thoughts on “Survey: Abstract Ideas and Natural Phenomena as Prior Art”
157
These classes are better treated as non-patent eligible subject matter under section 101. If they are described in a printed publication, thne that publication would be prior art as far as what it discloses.
156
Let the records show that (yet another) thread has come and gone and the elephants that crush the dogmas of the likes of Malcolm and Ned are conveniently ignored.
(and note Ned, that the previously unknown is NOT limited to unknown except to the inventor)
C’est la vie.
155
“without actually having done so ”
JFC, Ned. I have done so.
Even on this thread (see my post at April 17 at 8:14 PM) – and there is no REASONABLE way for you to postulate positions that I have attacked as being my positions.
“just this once” – I told you already in this give and take. See April 16 at 6:31 PM.
“For one, does it require personal knowledge of the product by the inventor in order to apply?”
Asked and answered: NO, not at the time of invention. This has been covered many many many many many many times in our conversations on Chakrabarty. Maybe THIS TIME – just this once, you will answer the question I posted at April 17 at 5:13 PM AND at April 18, 3:51 PM:
We have been over this many many many times. Last time you ran away when I asked you to provide SOME legal basis in opposition to what the Supreme Court has said. Clearly, you could provide none then.
Have you now found some legal basis?
Please share it.
Thanks,
(ps: timing is NOT a 101 issue – you keep on trying to shoehorn and bootstrap a 102/103 issue into the argument and I keep on telling you to not do so. See the 9-0 Prometheus response to that line of logic).
154
anon, repeating again and again and again that you have in the past confirmed your position on Law of Nature without actually having done so is a pattern many of us here recognize so well.
Could you, just this once, tell us what you believe the Product of Nature exception is?
For one, does it require personal knowledge of the product by the inventor in order to apply? Every example given in the oral argument this week at the Supreme Court had such personal knowledge in the example. Most often discussed is the scientist discovering a plant in the Amazon.
Just answer this question, and let us see if there even need be a follow-on question.
153
“still fail to confirm what your position is.”
I have confirmed my position many times. Not my problem if you choose to misunderstand it.
And my position is perfectly in accord with the product of nature doctrine. Perfectly. It is you that keeps attempting to throw into the 101 argument this notion of 102(f) prior art? I keep correcting you.
So once again – your 1) here is completely irrelevant to anything I have put forth as my position.
You can only arrive at this very very very strange view through purposful malfeasance and attempted dust-kicking semantics.
Please stop.
152
But it may well be inherent in all prior art references.
151
Anon: "in" vs. "from"
Anon, I think I understand your position and have repeated it a number of times. You still fail to confirm what your position is.
It is your position that:
1) A novel composition of matter made by man is not rendered invalid when that composition is later found in nature.
2) A composition of matter found in nature by the alleged inventor cannot be patented.
I simply point out to you that you your position is not consistent with a product of nature exception, but with the discovered composition being 102(f) prior art.
And, sir, I think this is right.
150
“in” vs “from”
You are attempting to play semantics – I will have none of it.
149
anon, but you say Monsanto's patents are valid even though it is clear the patented gene is found in nature.
148
“If one develops, for example, a composition or plant by pure engineering without reference to Nature, the patent is valid even if the composition or plant is later found in Nature‘
Why would you ever think that?
Are you purposefully ignoring the countless posts that have explained otherwise?
“From this I deduce that”
Except for the fact that I have directly told you otherwise in no unceratin terms, even pointing the way with the words of the Surpreme Court.
You could not be further in the weeds if you tried (and the thought crosses my mind that you are, in fact, trying very very very hard to be lost in the weeds).
147
Anon, I am trying to understand your meaning.
From your answers, I think mean to say that a Product of Nature exception exists when one discovers the Product of Nature and tries to claim it. If one develops, for example, a composition or plant by pure engineering without reference to Nature, the patent is valid even if the composition or plant is later found in Nature.
From this I deduce that your Product of Nature exception is nothing more than a prior art exception, namely 102(f).
But that has been repealed, and note should be taken of that fact.
146
It’s not that you haven’t attempted Ned – it’s that you haven’t completed the (same, but earlier) conversation.
So let me attempt again:
What part of “the warehouse of nature belongs to all men” do you not understand?
What you hope for in your XYZ plant example does not survive what the Supreme Court has said in Chakrabarty.
We have been over this many many many times. Last time you ran away when I asked you to provide SOME legal basis in opposition to what the Supreme Court has said. Clearly, you could provide none then.
Have you now found some legal basis?
Please share it.
Thanks,
145
“That’s a lie”
LOL – you do realize that EVERY time you have stated that I have lied and that I have asked you to point out the specifics you have bailed on the conversation?
“That thing I do” is hand you your head.
Thing is, Malcolm, you keep on asking me to do so.
144
MM: What is “this theory”?
101 Integration Expert: Your theory ( or proposition as you’ve called it) of first dissecting all processes into what you call eligible and ineligible steps, and then ignoring, or refusing to give patentable weight to the so called ineligible steps in the concluding analysis. Such a theory, if ever allowed by the Court would give petitioners, or examiners, a surgical instrument that would subjectively vitiate any claim, and ultimately eviscerate all patent law. Starting first and foremost with the Courts controlling precedent for over 30 years ( Diehr) in which claims are considered as an inseparable whole.
MM: Please explain the “conflict” and tell everyone how a subsequent novel mental step can be “integrated” with an old eligible step in such a way to as to satisfy 101.
101 Integration Expert: You have just answered your own question (the conflict) and defeated your own proposition by proffering a challenge that will ultimately show how “dissection” and “integration” can’t coexist at the same time. The former is the antithesis of the latter.
Even in the special circumstance of post solution activity, as was the case in Flook and Prometheus, the claims are ultimately integrated and considered as an inseparable whole in the concluding analysis for 101 subject matter eligibility. See, “( Diehr and Flook, the cases most directly on point, both addressed processes using mathematical formulas that, like laws of nature, are not themselves patentable. In Diehr, the overall process was patent eligible because of the way the additional steps of the process “integrated” the equation into the “process as a whole”. 450 U. S., at 187. These additional steps transformed the process into an inventive application of the formula. )” [MAYO COLLABORATIVE SERVICES v. PROMETHEUS LABORATORIES, INC 566 U. S. (2012) 3 Syllabus] (Emphasis Added)
Any further questions?
143
Les, yes, 102(e) being a source of prior art has long aggravated many. The AIPLA was among the leading grousers. In a first to invent system, it the filing date of a patent application should have only given the filer priority in a contest of rival inventors to a patent. It should not have ever been given prior art status.
Then Judge Rich went “mad.” He even made prior invention prior art when it had never been consider such. Wow.
So we go to FTF. We get rid of 102(g), as well we should have. But we retain a vigorous and extreme 102(e)? Madness.
Observers from across the world think we have lost our marbles.
142
anon, this reply was not posted yesterday. I will make a second attempt.
anon, I do not understand what your are talking about when you are talking about warehouses of nature belongs to all men, and then make exceptions such as when one finds the plant Monsanto patented in the warehouse of nature it does not belong to all men, just to Monsanto.
1) You say plants found in nature are in the “warehouse;” but
2) You further say that patented plants found in nature are not in the “warehouse.”
Then you say that if one patents a plant later found to be in nature, your patent is invalid under 101. But how this is this position consistent with your position on Monsanto’s patented plants.
I have said there is no product of nature exception at all, and that it has to be some form of prior art exception, such as 102(f). Thus, if I find a plant in nature, I cannot patent it because I DID NOT INVENT THAT PLANT.
But if I make my invention without reference to what is in nature, the patent is valid regardless that it is later discovered there. Totally prior art
141
A secret is a secret is a secret.
Patent law allows for secret prior art. Ned implied it didn’t. That’s the only issue I saw.
Anyway, Coke’s formula is all over the internet. Google it.
140
That’s not quite the same, now is it, Les?
Your ‘secret’ is merely a matter of timing – hardly the secrecy being discussed.
139
Whats your point? Mine is there IS secret prior art. Even in an AIA world 35 USC 102(a)(2) defines secret prior art. Patent applications filed but not published before the claimed invention.
138
Been there, done that Les.
Have a glance at the title of the new 102.
Compare it to the title of the old 102.
Come back when you figure it out.
137
More like Malcolm fails to realize that the math shows a higher percentage – that is GREATER stalking factor FOR Leopold to me than the other way around.
Yet another great Malcolm FAIL and accuse others of what he himself does (or is).
How do you stand to be so wrong so often?
136
“s-ckie:”
LOL.
How about “hypocrite” for you Malcolm, (or Francis, or Keeping It Real, or…)
And before you get your undies in a bunch, remember, I have been consistent in that different monikers is NOT a quality problem, if you pay attention to content (and I can see why you don’t want to pay attention to content as that wrecks your “policy” w@nking).
135
Fine, for the younguns:
If only that were true. Have a glance at 35 USC 102(a)(2)(a.k.a the secret prior art clause).
134
Malcolm still has never addressed how his pet theory even accommodates the legitimacy of claims with only old steps
That’s a lie, trollboy. Gee eff why.
Dennis, your little s-ciopath “anon” is doing that thing he does.
133
In the last 5 posts, X posted a total of 93 comments, and Y posted 4 replies to those comments. In those same 5 posts, Y posted a total of 8 comments, and X posted four replies to those comments.
So, X has a “stalking ratio” of 4/8 = 50%. Y has a stalking ratio of 4/93 = 4.3%.
HUMPTY DOESN’T DO MATHS.
132
s-ckie: This theory is in conflict with the Courts explicit use of “integration” in the Prometheus case
What is “this theory”? Please explain the “conflict” and tell everyone how a subsequent novel mental step can be “integrated” with an old eligible step in such a way to as to satisfy 101. Thanks, s-ckie.
131
LOL – way to self-defeat.
Yet another Malcolm style posting technique you would be well advised NOT to emulate.
130
On this and the sister thread (AMP v Myriad) I have looked at the data.
You are 7.9 times as likely to troll me, my friend.
¡Olé!
129
Here, I’ll give you a hint. I’ve compiled data for the last 5 posts. The data includes my last comment, but doesn’t include the comments where you mistakenly thought you were replying to me.
In the last 5 posts, X posted a total of 93 comments, and Y posted 4 replies to those comments. In those same 5 posts, Y posted a total of 8 comments, and X posted four replies to those comments.
So, X has a “stalking ratio” of 4/8 = 50%. Y has a stalking ratio of 4/93 = 4.3%.
Care to hazard a guess as to which numbers belong to which commenter?
128
LOL – let’s see the “said in reply to” data on percentages of just whom each other posts and see the plain fact about who is the stalker.
Yes, let’s see that data. To be clear, the measure is the percentage of my total posts that you reply to, versus the percentage of your total posts that I reply to. (We won’t even count all those posts where you gratuitously throw my name in, even though I’m not involved in the conversation.) Care to take a guess at which is higher, anon? Remember, it’s archived…
127
Les,
Perhaps Ned meant to say “under the new law of the AIA,…”
126
“secrets are not prior art”
If only that were true. Have a glance at 35 USC 102(e)(a.k.a the secret prior art clause).
125
Should also consider In re Seaborg? Is the Technetium in Fermi’s radiactive sludge prior art?
124
This theory is in conflict with the Courts explicit use of “integration” in the Prometheus case and is therefore legally invalid.
123
It’s sad that you think science is a “useful art.” See Mayer’s dissent in In re Bilski, 545 F.3d 943 (Fed. Cir. 2008). For a more interesting read that discusses the meaning of the phrase at the adoption of the constitution, see Edward C. Walterscheid, The Nature of the Intellectual Property Clause: A Study in Historical Perspective (2002).
122
Hence the attempted conflation between prior art and 101 is shown to be pure nonsense.
It simply matters NOT AT ALL the timing of man making anything if – at any time – that very thing is effectively in nature’s warehouse – though just discovered.
In this sense, the very essence of the survey question is based in dust-kicking.
Shame on the multitude for picking anything except “none of the above.” Law should aim for clarity, not mucking everything together in one great big WHATEVER.
121
Prior art is “art” (product of human effort), which may use or apply abstract ideas or natural phenomena, but must include some contribution of human design or ingenuity. To paraphrase the late Chief Judge Markey: There is nothing new under the sun, only new combinations of old elements. When once-new combinations get old, they become prior art.
Jai Rho
120
“I still would like to know what you mean.”
What part of “the warehouse of nature belongs to all men” do you not understand?
WHat you hope for in your XYZ plant example does not survive what the Supreme Court has said in Chakrabarty.
We have been over this many many many times. Last time you ran away when I asked you to provide SOME legal basis in opposition to what the Supreme Court has said. Clearly, you could provide none then.
Have you now found some legal basis?
Please share it.
Thanks,
119
LBZ, thanks.
Regarding US practice, we really do not have any exclusions from patentable subject matter despite what the Supreme Court says. If one looks at the cases carefully, the so-called Law of Nature and other exceptions are really simply a requirement that such subject matter be applied practically, and not be claimed "as such."
Thus, I think, the EPO and the US law reach the same result but by slightly different processes.
118
I still would like to know what you mean.
I take compounds X, Y, and Z, and by a process produce XYZ. Later, years after the patent has issued, XYZ is found in a plant in a competitor’s back yard. That is the only plant known to have that compound.
Is my patent invalid?
I would hope not.
Next, it is shown that the plant containing XYZ exists everywhere in the world. One only has to “extract” it. Is the patent invalid? Or, better, is extraction an infringement?
Anon, tell us what you mean. Please.
You have already given your view that finding Monsanto’s patented plants everywhere in the wild will not invalidate Monsanto’s patents. But, you have not explained why.
117
Fish, only Congress can overrule the Supreme Court, not some Federal Circuit panel.
Function of a machine merely references Wyeth v. Stone, claiming a machine functionally, i.e., by describing a machine by its operation or result. Cf. Tarzny-Hornock for Rich's analysis.
That doctrine's proscripton resulted in Westinghouse's claims construction (see 112(f)), then Halliburton totally proscribing functional claiming at the point of novelty.
112(f) "overruled" Halliburton to a limited extent by allowing functional claiming at the PON so long as certain formalities. If those formalities are not observed, Halliburton, Wyeth, Morse are all still good law.
The problem of course is that the Supreme Court sees these cases as 101 cases, when they are not.
Ned
116
Time and Time just as a follow-up, no, the explicit steps of designing are not described in the spec. To state it more clearly, no description of the “designing” process is given.
Oh, in that case then surely a 101 fail (and likely a 102,103 and 112 fail as well). Any reasonable interpretation of “design” would include a purely mental design process. Certainly the broadest reasonable interpretation would which should prevent the claim from ever existing the USPTO. To the USPTO’s credit, I’ve never seen such a claim issue under the circumstances you’ve described.
115
1. The courts exclusions are unconstitutional and should be overturned.
2. Both the constitution and the statute refer to Discoveries. I respectfully submit that there is nothing to Dis-cover but natural laws and products of nature that were previously *covered* by the fog of ignorance.
3. If natural phenomenon and laws of nature were prior art, then the light bulb and the Wright flyer’s wing warping all become obvious. Nothing is patentable, everything is obvious.
114
The lack of honest answers – and the over abundance of dust-kicking says a lot more than you dare admit Malcolm.
It’s nice to see your usual little circle all stay quiet on your lack of answers.
This too is archived.
113
“ include a series of specified novel, non-obvious and individually eligible steps (e.g., no mental steps included).”
Back to blatant lies about the controlling state of law about perfectly eligible claims allowed to have mental steps again, Macolm?
Your statements on this too are archived that you have admitted that a claim can contain mental steps – and yet you attempt a spin (again) of ‘no‘ mental steps.
Why the lies, Malcolm? They are so transparent.
112
MM – just as a follow-up, no, the explicit steps of designing are not described in the spec. To state it more clearly, no description of the “designing” process is given.
111
” “Designing” is all thought.”
Or at least certainly can all be done by thought, which is where I come out on this claim.
Other issues include claiming to be a process for making but it only seems to have that one, single step – designing it to have “less plaque formation” and to “be efficacious”.
When I see gahrbazh like this grant, I really want to send the examiner a nastygram or two…
110
Fish: or does “designing” fail 112
More likely both 112 and 101. The applicant could expressly define “design” to include a series of specified novel, non-obvious and individually eligible steps (e.g., no mental steps included). Good examination would seem to require those steps to be recited in the claim for the public to see instead of having to refer to the specification but, well, you know how it is at the PTO.
As it stands, with nothing more, the claim we’re talking about is also anticipated as the idea of designing the recited stent is already in the prior art.
109
or does “designing” fail 112 and does not present a 101 issue, afterall it is a claim for a process???
108
You are correct – I misunderstood your post.
107
“justified in the absence of an explicit provision in US law”
LOL – the elephant that Malcom and Ned refuse to acknowledge.
Gotta love it.
106
“get confused about who to stalk”
LOL – let’s see the “said in reply to” data on percentages of just whom each other posts and see the plain fact about who is the stalker.
You’ve picked up yet another of the (trite, tired and highly ineffective) Malcolm rhetorical devices: accuse others of that which you do.
Don’t you have any originality?
105
The warehouse of nature belongs to all men.
104
““Designing” is all thought.”
Actually, it depends.
True design activities may include validation steps whic can most definitely expand beyond “all thought.”
You really should stop posting on those things you are clueless about Malcolm.
103
Ned, you asked for the European point of view and I gave you a “European” answer.
Although the law does not prescribe a specific order in which the requirements for granting a patent need to be examined, it is nevertheless normal practice that the claims are matched to the actual technical teaching of the patent application, i.e. they are made clear, concise and supported by the description (this is the requirement of Art. 84 EPC) before the question of whether they are novel and inventive is touched. Doing otherwise exposes you to the risk of conflating issues that should be kept separate.
If an applicant is unable or unwilling to do so, his application will be refused for lack of clarity. Maybe also a “formal” novelty objection could be added, if prior art was available showing any apparatus whatsoever for producing uniform blocks of ice, but that would not be strictly necessary.
102
For example, that gene mutation being used in a system and method to assess risk for that cancer.
101
Is this claim old step + thought? Or is it essentially all thought?
A method for making a stent, comprising the steps of designing the stent to have less plaque formation and be efficacious in decreasing incidence of blood clots.
“Designing” is all thought.
100
Ned, my personal opinions do not really matter, here.
Art. 52(1) EPC stipulates that “patents shall be granted, for any inventions, in all fields of technology […]”. This is a requirement, namely that an invention must underlie a patent. Art. 52(2) says that the certain things, “in particular” (the list is in principle not exhaustive) are not inventions, and in the list method for doing business are listed. If what you claim is purely a business method, that is not an invention in Europe as a matter of legal definition of what an invention is. Your first example appears to fall in that ballpark.
Industrial applicability is another requirement (Art. 52(1) and 57) for an invention to be patentable, which does not need to be investigated if the invention is not an invention to begin with.
In your second example, if the claim involving improving customer satisfaction is filed by Netflix, chances are that the claim indicates some technical means for carrying out the method and therefore it would overcome the first hurdle defined by Art. 52(1) since it would not relate solely to excluded subject – matter (Art. 52(3)).
However, this does not mean that an invention defined by such a claim would be patentable. The Boards of Appeals of the EPO have long struggled to strike a balance between the three different paragraphs of Art. 52 and after a couple of false starts, they decided that if the difference between the claim and the prior art is related to subject – matter excluded under Art. 52(2) this difference cannot contribute to an inventive step. The claim would thus be obvious, although the word here is used with a diffrent meaning than in the US. The landmark decisions in this respect are the “Comvik” T 641/00 and “Hitachi” case T 258/03, and since then this approach has been pretty much consistently adopted.
99
Wyeth v. Stone, 1 Story 273, Fed. Cas. 18107 (CC Mass. 1840)
Claims essentially were required after Evans v. Eaton, Evans v. Eaton, 20 US 356 – Supreme Court 1822 (Story, J.), and were required by statute in 1836. Wyeth v. Stone was decided in 1840.
98
MD, I don’t think Story object to the claim on the basis of lack of any definition of uniformity. The problem was the breath of the claim, the functional nature of the claim.
97
LBZ, certainly the claim is non specific and only claims a result. But that is the pith and essence of our so-called 101 problem of claiming principles in the abstract. The claims are effectively claiming the result, which effectively claims the principle without any limitation to disclosed means or methods.
96
Thanks. Which was not valid, IIRC, as trying to claim* a process that was nothing more than the idea of the functionings of the machine…?
But what I’m talking about here (sampled in the claim above) is a 21st century claim that seems amenable to being nothing more than thought….
*Although also IIRC patents in the time of that Wyeth did not actually have separately set out claims sets but instead just talked through in the spec in paragraph form what they were claiming.
95
LBZ, are you suggesting that business risk, price, quality, timeliness, value, appeal, customer satisfaction and the like are not
“technology?”
Thus, if I identify a problem in customer satisfaction in a business, and design a new way of taking care of business to enhance customer satisfaction, I have not made an inventive step. Manifestly, I have.
As to industrial applicability, what does that mean? Is Netflix, for example, not an industry such that a patent on increasing customer satisfaction with its service not eligible in Europe?
Suppose that I claim spinning the prayer wheel X times for every sin one commits, is the problem with the claim something to do with spinning the wheel or counting sins?
94
Ned, how uniform is “uniform”? As objections to such a claim under the EPC we can add to LBZ’s Art 83 and 84 my Art 54 no novelty and Art 56 obvious.
93
Erm, no. A claim directed to a business method may well have some practical application, but would fail Art. 52(2) if it contained ONLY business method steps.
However, it must be noted that European law groups under the same provision – Art. 52(1) – a number of different requirements that arise under different sections of US law, namely: (i) there must be an invention in a field of technology, (ii) it must be new,(iii) involve an inventive step, and (iv) be industrially applicable. The list of “ineligible” subject-matter in practice reinforces the requirement of inventive step (Art. 52(1) and 56), since if what distinguishes the claim from the prior art is not “an invention” in the sense of Art. 52(2), that claim cannot be granted.
92
Wyeth v. Stone, a method of making ice comprising using a machine adapted to produce blocks of ices of uniform size.
91
Wait a minute.
If an inventor makes a new bacteria, can that bacteria patent be invalidate by proof that the bacteria existed, let us say, on Mars, prior to its invention?
(Assume universal prior art.)
If you say yes, they what is it that you are proving?
90
MD, agreed.
I think public availablilty is quite different from prior existence.
Thus, I assume that if a product does not disclose the process, the process is not prior art.
Moreover, the existence of a mutation in a gene as a cause of certain cancers does not make that association prior art. Even if the gene sequence itself was published in a database, the association is a discovery and merits protection in some form.
89
thanks
88
Such a claim would fall either under Art. 83 – insufficiency of disclosure or Art. 84 – clarity, in that it describes a result to be achieved. I suspect the actual claim in that case was more elaborate than that, though.
87
anon, no, you missed the point. The “as such” implies that a practical application is required for eligibility.
86
Fish,
See below my bit on prior art for more. But in the early days, the Courts were dealing with what such things as patentable subject matter in terms in terms of scope of the claims. If the claims were so broadly written as to claim the principle of the invention without regard to any apparatus or method disclosed, they said essentially said the claims were too broad, indefinite, not enabled or described for their full breadth.
The vice lay 100% in the scope of the claims. A 112 issue.
85
My apologies, I did not mean to create such confusion. I have modified my handle accordingly.
84
Hey, L. B., would you mind picking a different screen name? I’ve been using “LB” for a while. I suppose it’s not that important, but anon will get confused about who to stalk.
Thanks in advance.
83
Except that it’s not me (the LB formerly known as Leopold Bloom). I don’t know who this is.
82
MD, what in the EPO would be wrong with the claim in Wyeth v. Stone,
I claim any apparatus that produces block of ice of an uniform size?
81
You quite missed the point.
And very badly so.
80
“in” or “from” ?
79
anon, “for eligibility” is implied.
78
anon, but you would not invalidate Monsanto’s patents upon proof that the patented plant is in nature.
77
Is this claim old step + thought? Or is it essentially all thought?
A method for making a stent, comprising the steps of designing the stent to have less plaque formation and be efficacious in decreasing incidence of blood clots.
These classes are better treated as non-patent eligible subject matter under section 101. If they are described in a printed publication, thne that publication would be prior art as far as what it discloses.
Let the records show that (yet another) thread has come and gone and the elephants that crush the dogmas of the likes of Malcolm and Ned are conveniently ignored.
(and note Ned, that the previously unknown is NOT limited to unknown except to the inventor)
C’est la vie.
“without actually having done so ”
JFC, Ned. I have done so.
Even on this thread (see my post at April 17 at 8:14 PM) – and there is no REASONABLE way for you to postulate positions that I have attacked as being my positions.
“just this once” – I told you already in this give and take. See April 16 at 6:31 PM.
“For one, does it require personal knowledge of the product by the inventor in order to apply?”
Asked and answered: NO, not at the time of invention. This has been covered many many many many many many times in our conversations on Chakrabarty. Maybe THIS TIME – just this once, you will answer the question I posted at April 17 at 5:13 PM AND at April 18, 3:51 PM:
We have been over this many many many times. Last time you ran away when I asked you to provide SOME legal basis in opposition to what the Supreme Court has said. Clearly, you could provide none then.
Have you now found some legal basis?
Please share it.
Thanks,
(ps: timing is NOT a 101 issue – you keep on trying to shoehorn and bootstrap a 102/103 issue into the argument and I keep on telling you to not do so. See the 9-0 Prometheus response to that line of logic).
anon, repeating again and again and again that you have in the past confirmed your position on Law of Nature without actually having done so is a pattern many of us here recognize so well.
Could you, just this once, tell us what you believe the Product of Nature exception is?
For one, does it require personal knowledge of the product by the inventor in order to apply? Every example given in the oral argument this week at the Supreme Court had such personal knowledge in the example. Most often discussed is the scientist discovering a plant in the Amazon.
Just answer this question, and let us see if there even need be a follow-on question.
“still fail to confirm what your position is.”
I have confirmed my position many times. Not my problem if you choose to misunderstand it.
And my position is perfectly in accord with the product of nature doctrine. Perfectly. It is you that keeps attempting to throw into the 101 argument this notion of 102(f) prior art? I keep correcting you.
So once again – your 1) here is completely irrelevant to anything I have put forth as my position.
You can only arrive at this very very very strange view through purposful malfeasance and attempted dust-kicking semantics.
Please stop.
But it may well be inherent in all prior art references.
Anon: "in" vs. "from"
Anon, I think I understand your position and have repeated it a number of times. You still fail to confirm what your position is.
It is your position that:
1) A novel composition of matter made by man is not rendered invalid when that composition is later found in nature.
2) A composition of matter found in nature by the alleged inventor cannot be patented.
I simply point out to you that you your position is not consistent with a product of nature exception, but with the discovered composition being 102(f) prior art.
And, sir, I think this is right.
“in” vs “from”
You are attempting to play semantics – I will have none of it.
anon, but you say Monsanto's patents are valid even though it is clear the patented gene is found in nature.
“If one develops, for example, a composition or plant by pure engineering without reference to Nature, the patent is valid even if the composition or plant is later found in Nature‘
Why would you ever think that?
Are you purposefully ignoring the countless posts that have explained otherwise?
“From this I deduce that”
Except for the fact that I have directly told you otherwise in no unceratin terms, even pointing the way with the words of the Surpreme Court.
You could not be further in the weeds if you tried (and the thought crosses my mind that you are, in fact, trying very very very hard to be lost in the weeds).
Anon, I am trying to understand your meaning.
From your answers, I think mean to say that a Product of Nature exception exists when one discovers the Product of Nature and tries to claim it. If one develops, for example, a composition or plant by pure engineering without reference to Nature, the patent is valid even if the composition or plant is later found in Nature.
From this I deduce that your Product of Nature exception is nothing more than a prior art exception, namely 102(f).
But that has been repealed, and note should be taken of that fact.
It’s not that you haven’t attempted Ned – it’s that you haven’t completed the (same, but earlier) conversation.
So let me attempt again:
What part of “the warehouse of nature belongs to all men” do you not understand?
What you hope for in your XYZ plant example does not survive what the Supreme Court has said in Chakrabarty.
We have been over this many many many times. Last time you ran away when I asked you to provide SOME legal basis in opposition to what the Supreme Court has said. Clearly, you could provide none then.
Have you now found some legal basis?
Please share it.
Thanks,
“That’s a lie”
LOL – you do realize that EVERY time you have stated that I have lied and that I have asked you to point out the specifics you have bailed on the conversation?
“That thing I do” is hand you your head.
Thing is, Malcolm, you keep on asking me to do so.
MM: What is “this theory”?
101 Integration Expert: Your theory ( or proposition as you’ve called it) of first dissecting all processes into what you call eligible and ineligible steps, and then ignoring, or refusing to give patentable weight to the so called ineligible steps in the concluding analysis. Such a theory, if ever allowed by the Court would give petitioners, or examiners, a surgical instrument that would subjectively vitiate any claim, and ultimately eviscerate all patent law. Starting first and foremost with the Courts controlling precedent for over 30 years ( Diehr) in which claims are considered as an inseparable whole.
MM: Please explain the “conflict” and tell everyone how a subsequent novel mental step can be “integrated” with an old eligible step in such a way to as to satisfy 101.
101 Integration Expert: You have just answered your own question (the conflict) and defeated your own proposition by proffering a challenge that will ultimately show how “dissection” and “integration” can’t coexist at the same time. The former is the antithesis of the latter.
Even in the special circumstance of post solution activity, as was the case in Flook and Prometheus, the claims are ultimately integrated and considered as an inseparable whole in the concluding analysis for 101 subject matter eligibility. See, “( Diehr and Flook, the cases most directly on point, both addressed processes using mathematical formulas that, like laws of nature, are not themselves patentable. In Diehr, the overall process was patent eligible because of the way the additional steps of the process “integrated” the equation into the “process as a whole”. 450 U. S., at 187. These additional steps transformed the process into an inventive application of the formula. )” [MAYO COLLABORATIVE SERVICES v. PROMETHEUS LABORATORIES, INC 566 U. S. (2012) 3 Syllabus] (Emphasis Added)
Any further questions?
Les, yes, 102(e) being a source of prior art has long aggravated many. The AIPLA was among the leading grousers. In a first to invent system, it the filing date of a patent application should have only given the filer priority in a contest of rival inventors to a patent. It should not have ever been given prior art status.
Then Judge Rich went “mad.” He even made prior invention prior art when it had never been consider such. Wow.
So we go to FTF. We get rid of 102(g), as well we should have. But we retain a vigorous and extreme 102(e)? Madness.
Observers from across the world think we have lost our marbles.
anon, this reply was not posted yesterday. I will make a second attempt.
anon, I do not understand what your are talking about when you are talking about warehouses of nature belongs to all men, and then make exceptions such as when one finds the plant Monsanto patented in the warehouse of nature it does not belong to all men, just to Monsanto.
1) You say plants found in nature are in the “warehouse;” but
2) You further say that patented plants found in nature are not in the “warehouse.”
Then you say that if one patents a plant later found to be in nature, your patent is invalid under 101. But how this is this position consistent with your position on Monsanto’s patented plants.
I have said there is no product of nature exception at all, and that it has to be some form of prior art exception, such as 102(f). Thus, if I find a plant in nature, I cannot patent it because I DID NOT INVENT THAT PLANT.
But if I make my invention without reference to what is in nature, the patent is valid regardless that it is later discovered there. Totally prior art
A secret is a secret is a secret.
Patent law allows for secret prior art. Ned implied it didn’t. That’s the only issue I saw.
Anyway, Coke’s formula is all over the internet. Google it.
That’s not quite the same, now is it, Les?
Your ‘secret’ is merely a matter of timing – hardly the secrecy being discussed.
Whats your point? Mine is there IS secret prior art. Even in an AIA world 35 USC 102(a)(2) defines secret prior art. Patent applications filed but not published before the claimed invention.
Been there, done that Les.
Have a glance at the title of the new 102.
Compare it to the title of the old 102.
Come back when you figure it out.
More like Malcolm fails to realize that the math shows a higher percentage – that is GREATER stalking factor FOR Leopold to me than the other way around.
Yet another great Malcolm FAIL and accuse others of what he himself does (or is).
How do you stand to be so wrong so often?
“s-ckie:”
LOL.
How about “hypocrite” for you Malcolm, (or Francis, or Keeping It Real, or…)
And before you get your undies in a bunch, remember, I have been consistent in that different monikers is NOT a quality problem, if you pay attention to content (and I can see why you don’t want to pay attention to content as that wrecks your “policy” w@nking).
Fine, for the younguns:
If only that were true. Have a glance at 35 USC 102(a)(2)(a.k.a the secret prior art clause).
Malcolm still has never addressed how his pet theory even accommodates the legitimacy of claims with only old steps
That’s a lie, trollboy. Gee eff why.
Dennis, your little s-ciopath “anon” is doing that thing he does.
In the last 5 posts, X posted a total of 93 comments, and Y posted 4 replies to those comments. In those same 5 posts, Y posted a total of 8 comments, and X posted four replies to those comments.
So, X has a “stalking ratio” of 4/8 = 50%. Y has a stalking ratio of 4/93 = 4.3%.
HUMPTY DOESN’T DO MATHS.
s-ckie: This theory is in conflict with the Courts explicit use of “integration” in the Prometheus case
What is “this theory”? Please explain the “conflict” and tell everyone how a subsequent novel mental step can be “integrated” with an old eligible step in such a way to as to satisfy 101. Thanks, s-ckie.
LOL – way to self-defeat.
Yet another Malcolm style posting technique you would be well advised NOT to emulate.
On this and the sister thread (AMP v Myriad) I have looked at the data.
You are 7.9 times as likely to troll me, my friend.
¡Olé!
Here, I’ll give you a hint. I’ve compiled data for the last 5 posts. The data includes my last comment, but doesn’t include the comments where you mistakenly thought you were replying to me.
In the last 5 posts, X posted a total of 93 comments, and Y posted 4 replies to those comments. In those same 5 posts, Y posted a total of 8 comments, and X posted four replies to those comments.
So, X has a “stalking ratio” of 4/8 = 50%. Y has a stalking ratio of 4/93 = 4.3%.
Care to hazard a guess as to which numbers belong to which commenter?
LOL – let’s see the “said in reply to” data on percentages of just whom each other posts and see the plain fact about who is the stalker.
Yes, let’s see that data. To be clear, the measure is the percentage of my total posts that you reply to, versus the percentage of your total posts that I reply to. (We won’t even count all those posts where you gratuitously throw my name in, even though I’m not involved in the conversation.) Care to take a guess at which is higher, anon? Remember, it’s archived…
Les,
Perhaps Ned meant to say “under the new law of the AIA,…”
“secrets are not prior art”
If only that were true. Have a glance at 35 USC 102(e)(a.k.a the secret prior art clause).
Should also consider In re Seaborg? Is the Technetium in Fermi’s radiactive sludge prior art?
This theory is in conflict with the Courts explicit use of “integration” in the Prometheus case and is therefore legally invalid.
It’s sad that you think science is a “useful art.” See Mayer’s dissent in In re Bilski, 545 F.3d 943 (Fed. Cir. 2008). For a more interesting read that discusses the meaning of the phrase at the adoption of the constitution, see Edward C. Walterscheid, The Nature of the Intellectual Property Clause: A Study in Historical Perspective (2002).
Hence the attempted conflation between prior art and 101 is shown to be pure nonsense.
It simply matters NOT AT ALL the timing of man making anything if – at any time – that very thing is effectively in nature’s warehouse – though just discovered.
In this sense, the very essence of the survey question is based in dust-kicking.
Shame on the multitude for picking anything except “none of the above.” Law should aim for clarity, not mucking everything together in one great big WHATEVER.
Prior art is “art” (product of human effort), which may use or apply abstract ideas or natural phenomena, but must include some contribution of human design or ingenuity. To paraphrase the late Chief Judge Markey: There is nothing new under the sun, only new combinations of old elements. When once-new combinations get old, they become prior art.
Jai Rho
“I still would like to know what you mean.”
What part of “the warehouse of nature belongs to all men” do you not understand?
WHat you hope for in your XYZ plant example does not survive what the Supreme Court has said in Chakrabarty.
We have been over this many many many times. Last time you ran away when I asked you to provide SOME legal basis in opposition to what the Supreme Court has said. Clearly, you could provide none then.
Have you now found some legal basis?
Please share it.
Thanks,
LBZ, thanks.
Regarding US practice, we really do not have any exclusions from patentable subject matter despite what the Supreme Court says. If one looks at the cases carefully, the so-called Law of Nature and other exceptions are really simply a requirement that such subject matter be applied practically, and not be claimed "as such."
Thus, I think, the EPO and the US law reach the same result but by slightly different processes.
I still would like to know what you mean.
I take compounds X, Y, and Z, and by a process produce XYZ. Later, years after the patent has issued, XYZ is found in a plant in a competitor’s back yard. That is the only plant known to have that compound.
Is my patent invalid?
I would hope not.
Next, it is shown that the plant containing XYZ exists everywhere in the world. One only has to “extract” it. Is the patent invalid? Or, better, is extraction an infringement?
Anon, tell us what you mean. Please.
You have already given your view that finding Monsanto’s patented plants everywhere in the wild will not invalidate Monsanto’s patents. But, you have not explained why.
Fish, only Congress can overrule the Supreme Court, not some Federal Circuit panel.
Function of a machine merely references Wyeth v. Stone, claiming a machine functionally, i.e., by describing a machine by its operation or result. Cf. Tarzny-Hornock for Rich's analysis.
That doctrine's proscripton resulted in Westinghouse's claims construction (see 112(f)), then Halliburton totally proscribing functional claiming at the point of novelty.
112(f) "overruled" Halliburton to a limited extent by allowing functional claiming at the PON so long as certain formalities. If those formalities are not observed, Halliburton, Wyeth, Morse are all still good law.
The problem of course is that the Supreme Court sees these cases as 101 cases, when they are not.
Ned
Time and Time just as a follow-up, no, the explicit steps of designing are not described in the spec. To state it more clearly, no description of the “designing” process is given.
Oh, in that case then surely a 101 fail (and likely a 102,103 and 112 fail as well). Any reasonable interpretation of “design” would include a purely mental design process. Certainly the broadest reasonable interpretation would which should prevent the claim from ever existing the USPTO. To the USPTO’s credit, I’ve never seen such a claim issue under the circumstances you’ve described.
1. The courts exclusions are unconstitutional and should be overturned.
2. Both the constitution and the statute refer to Discoveries. I respectfully submit that there is nothing to Dis-cover but natural laws and products of nature that were previously *covered* by the fog of ignorance.
3. If natural phenomenon and laws of nature were prior art, then the light bulb and the Wright flyer’s wing warping all become obvious. Nothing is patentable, everything is obvious.
The lack of honest answers – and the over abundance of dust-kicking says a lot more than you dare admit Malcolm.
It’s nice to see your usual little circle all stay quiet on your lack of answers.
This too is archived.
“ include a series of specified novel, non-obvious and individually eligible steps (e.g., no mental steps included).”
Back to blatant lies about the controlling state of law about perfectly eligible claims allowed to have mental steps again, Macolm?
Your statements on this too are archived that you have admitted that a claim can contain mental steps – and yet you attempt a spin (again) of ‘no‘ mental steps.
Why the lies, Malcolm? They are so transparent.
MM – just as a follow-up, no, the explicit steps of designing are not described in the spec. To state it more clearly, no description of the “designing” process is given.
” “Designing” is all thought.”
Or at least certainly can all be done by thought, which is where I come out on this claim.
Other issues include claiming to be a process for making but it only seems to have that one, single step – designing it to have “less plaque formation” and to “be efficacious”.
When I see gahrbazh like this grant, I really want to send the examiner a nastygram or two…
Fish: or does “designing” fail 112
More likely both 112 and 101. The applicant could expressly define “design” to include a series of specified novel, non-obvious and individually eligible steps (e.g., no mental steps included). Good examination would seem to require those steps to be recited in the claim for the public to see instead of having to refer to the specification but, well, you know how it is at the PTO.
As it stands, with nothing more, the claim we’re talking about is also anticipated as the idea of designing the recited stent is already in the prior art.
or does “designing” fail 112 and does not present a 101 issue, afterall it is a claim for a process???
You are correct – I misunderstood your post.
“justified in the absence of an explicit provision in US law”
LOL – the elephant that Malcom and Ned refuse to acknowledge.
Gotta love it.
“get confused about who to stalk”
LOL – let’s see the “said in reply to” data on percentages of just whom each other posts and see the plain fact about who is the stalker.
You’ve picked up yet another of the (trite, tired and highly ineffective) Malcolm rhetorical devices: accuse others of that which you do.
Don’t you have any originality?
The warehouse of nature belongs to all men.
““Designing” is all thought.”
Actually, it depends.
True design activities may include validation steps whic can most definitely expand beyond “all thought.”
You really should stop posting on those things you are clueless about Malcolm.
Ned, you asked for the European point of view and I gave you a “European” answer.
Although the law does not prescribe a specific order in which the requirements for granting a patent need to be examined, it is nevertheless normal practice that the claims are matched to the actual technical teaching of the patent application, i.e. they are made clear, concise and supported by the description (this is the requirement of Art. 84 EPC) before the question of whether they are novel and inventive is touched. Doing otherwise exposes you to the risk of conflating issues that should be kept separate.
If an applicant is unable or unwilling to do so, his application will be refused for lack of clarity. Maybe also a “formal” novelty objection could be added, if prior art was available showing any apparatus whatsoever for producing uniform blocks of ice, but that would not be strictly necessary.
For example, that gene mutation being used in a system and method to assess risk for that cancer.
Is this claim old step + thought? Or is it essentially all thought?
A method for making a stent, comprising the steps of designing the stent to have less plaque formation and be efficacious in decreasing incidence of blood clots.
“Designing” is all thought.
Ned, my personal opinions do not really matter, here.
Art. 52(1) EPC stipulates that “patents shall be granted, for any inventions, in all fields of technology […]”. This is a requirement, namely that an invention must underlie a patent. Art. 52(2) says that the certain things, “in particular” (the list is in principle not exhaustive) are not inventions, and in the list method for doing business are listed. If what you claim is purely a business method, that is not an invention in Europe as a matter of legal definition of what an invention is. Your first example appears to fall in that ballpark.
Industrial applicability is another requirement (Art. 52(1) and 57) for an invention to be patentable, which does not need to be investigated if the invention is not an invention to begin with.
In your second example, if the claim involving improving customer satisfaction is filed by Netflix, chances are that the claim indicates some technical means for carrying out the method and therefore it would overcome the first hurdle defined by Art. 52(1) since it would not relate solely to excluded subject – matter (Art. 52(3)).
However, this does not mean that an invention defined by such a claim would be patentable. The Boards of Appeals of the EPO have long struggled to strike a balance between the three different paragraphs of Art. 52 and after a couple of false starts, they decided that if the difference between the claim and the prior art is related to subject – matter excluded under Art. 52(2) this difference cannot contribute to an inventive step. The claim would thus be obvious, although the word here is used with a diffrent meaning than in the US. The landmark decisions in this respect are the “Comvik” T 641/00 and “Hitachi” case T 258/03, and since then this approach has been pretty much consistently adopted.
Wyeth v. Stone, 1 Story 273, Fed. Cas. 18107 (CC Mass. 1840)
Claims essentially were required after Evans v. Eaton, Evans v. Eaton, 20 US 356 – Supreme Court 1822 (Story, J.), and were required by statute in 1836. Wyeth v. Stone was decided in 1840.
MD, I don’t think Story object to the claim on the basis of lack of any definition of uniformity. The problem was the breath of the claim, the functional nature of the claim.
LBZ, certainly the claim is non specific and only claims a result. But that is the pith and essence of our so-called 101 problem of claiming principles in the abstract. The claims are effectively claiming the result, which effectively claims the principle without any limitation to disclosed means or methods.
Thanks. Which was not valid, IIRC, as trying to claim* a process that was nothing more than the idea of the functionings of the machine…?
But what I’m talking about here (sampled in the claim above) is a 21st century claim that seems amenable to being nothing more than thought….
*Although also IIRC patents in the time of that Wyeth did not actually have separately set out claims sets but instead just talked through in the spec in paragraph form what they were claiming.
LBZ, are you suggesting that business risk, price, quality, timeliness, value, appeal, customer satisfaction and the like are not
“technology?”
Thus, if I identify a problem in customer satisfaction in a business, and design a new way of taking care of business to enhance customer satisfaction, I have not made an inventive step. Manifestly, I have.
As to industrial applicability, what does that mean? Is Netflix, for example, not an industry such that a patent on increasing customer satisfaction with its service not eligible in Europe?
Suppose that I claim spinning the prayer wheel X times for every sin one commits, is the problem with the claim something to do with spinning the wheel or counting sins?
Ned, how uniform is “uniform”? As objections to such a claim under the EPC we can add to LBZ’s Art 83 and 84 my Art 54 no novelty and Art 56 obvious.
Erm, no. A claim directed to a business method may well have some practical application, but would fail Art. 52(2) if it contained ONLY business method steps.
However, it must be noted that European law groups under the same provision – Art. 52(1) – a number of different requirements that arise under different sections of US law, namely: (i) there must be an invention in a field of technology, (ii) it must be new,(iii) involve an inventive step, and (iv) be industrially applicable. The list of “ineligible” subject-matter in practice reinforces the requirement of inventive step (Art. 52(1) and 56), since if what distinguishes the claim from the prior art is not “an invention” in the sense of Art. 52(2), that claim cannot be granted.
Wyeth v. Stone, a method of making ice comprising using a machine adapted to produce blocks of ices of uniform size.
Wait a minute.
If an inventor makes a new bacteria, can that bacteria patent be invalidate by proof that the bacteria existed, let us say, on Mars, prior to its invention?
(Assume universal prior art.)
If you say yes, they what is it that you are proving?
MD, agreed.
I think public availablilty is quite different from prior existence.
Thus, I assume that if a product does not disclose the process, the process is not prior art.
Moreover, the existence of a mutation in a gene as a cause of certain cancers does not make that association prior art. Even if the gene sequence itself was published in a database, the association is a discovery and merits protection in some form.
thanks
Such a claim would fall either under Art. 83 – insufficiency of disclosure or Art. 84 – clarity, in that it describes a result to be achieved. I suspect the actual claim in that case was more elaborate than that, though.
anon, no, you missed the point. The “as such” implies that a practical application is required for eligibility.
Fish,
See below my bit on prior art for more. But in the early days, the Courts were dealing with what such things as patentable subject matter in terms in terms of scope of the claims. If the claims were so broadly written as to claim the principle of the invention without regard to any apparatus or method disclosed, they said essentially said the claims were too broad, indefinite, not enabled or described for their full breadth.
The vice lay 100% in the scope of the claims. A 112 issue.
My apologies, I did not mean to create such confusion. I have modified my handle accordingly.
Hey, L. B., would you mind picking a different screen name? I’ve been using “LB” for a while. I suppose it’s not that important, but anon will get confused about who to stalk.
Thanks in advance.
Except that it’s not me (the LB formerly known as Leopold Bloom). I don’t know who this is.
MD, what in the EPO would be wrong with the claim in Wyeth v. Stone,
I claim any apparatus that produces block of ice of an uniform size?
You quite missed the point.
And very badly so.
“in” or “from” ?
anon, “for eligibility” is implied.
anon, but you would not invalidate Monsanto’s patents upon proof that the patented plant is in nature.
Is this claim old step + thought? Or is it essentially all thought?
A method for making a stent, comprising the steps of designing the stent to have less plaque formation and be efficacious in decreasing incidence of blood clots.