157 thoughts on “Survey: Abstract Ideas and Natural Phenomena as Prior Art

  1. 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.

  2. 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.

  3. 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).

  4. 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.

  5. 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.

  6. 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.

  7. 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).

  8. 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.

  9. 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,

  10. 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.

  11. 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?

  12. 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.

  13. 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

  14. 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.

  15. That’s not quite the same, now is it, Les?

    Your ‘secret’ is merely a matter of timing – hardly the secrecy being discussed.

  16. 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.

  17. 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.

  18. 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?

  19. 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).

  20. 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).

  21. 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.

  22. 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.

  23. 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.

  24. LOL – way to self-defeat.

    Yet another Malcolm style posting technique you would be well advised NOT to emulate.

  25. 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!

  26. 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?

  27. 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…

  28. “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).

  29. This theory is in conflict with the Courts explicit use of “integration” in the Prometheus case and is therefore legally invalid.

  30. 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).

  31. 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.

  32. 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

  33. 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,

  34. 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.

  35. 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.

  36. 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

  37. 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.

  38. 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.

  39. 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.

  40. 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.

  41. 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.

  42. ” “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…

  43. 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.

  44. or does “designing” fail 112 and does not present a 101 issue, afterall it is a claim for a process???

  45. justified in the absence of an explicit provision in US law

    LOL – the elephant that Malcom and Ned refuse to acknowledge.

    Gotta love it.

  46. 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?

  47. “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.

  48. 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.

  49. For example, that gene mutation being used in a system and method to assess risk for that cancer.

  50. 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.

  51. 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.

  52. 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.

  53. 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.

  54. 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.

  55. 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.

  56. 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?

  57. 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.

  58. 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.

  59. 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?

  60. 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.

  61. 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.

  62. 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.

  63. 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.

  64. 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.

  65. Thanks MD, but I know the European statutory basis (by the way, I guess your reply should read that Art 52 EPC has *three* paragraphs, all of which are important).

    I did not want to enter in a detailed comparative analysis of the two concepts, but the idea of considering prior art what is ineligible under 101 during obviousness analysis reminds me of the European approach that disregards subject – matter referred to in Art. 52(2) EPC for the purposes of assessing inventive step. Yes, I know that “not technical” and “generally known” are not *exactly* equivelent, but my point here is that I find it difficult to justify the idea of combining 101, 102 and 103 this way without some explicit support in the law.

  66. Analogies are at times useful. Take the Coke formula. Allegedly, that formula remains a secret. As we know, secrets are not prior art.

    So another invents the Coke formula. Is that patent invalid on the observation that the Coke formula existed before the second discoverer?

    No.

    And the reason is that secrets are not prior art.

    If one discovers the exact DNA sequence that correlates with a known cancer, how can it be said that such a patent is invalid based on prior art? It cannot be said that the secret was known or practically knowable. It required independent research to discover the secret.

    There is a doctrine about invention once known, but lost to history. The patent of a second discover is not invalid because it is proved that the invention one existed.

    From these principles I deduce the following: prior art is known or practically knowable. On the latter, it is not knowable if it cannot be practically reverse engineered, somewhat like the enablement requirement, that says something is not enabled if undue experimentation is required.

    Thus with the DNA sequence at issue, it is not sufficient for prior art purposes to demonstrate that the sequence claimed existed, when its existence was unknown and practically unknowable without undue experimentation.

  67. didn’t CyberSource Corp. v. Retail Decisions,(Fed. Cir. 2011) get rid of the Risdon “function of the machine” doctrine?

  68. Let us consider “Product of Nature” for a moment. Is this not a form of prior art?

    Asked and answered – many, many, many, times: NO.

    Ned, please stop trying to obfuscate.

    Thanks

  69. the “as such” exclusion implies a practical application

    Quite the contrary Ned, it implies the opposite.

  70. The reason why we are in the precarious position we are in today is because prior art is defined too formalistically.

    On the contrary, Ryan, it is the opposite – people seek to conflate and play the ‘WHATEVER’ game and try NOT to understand the difference between patent eligibility and patentability.

    Do you recognize that there is a difference?

  71. The Justice Story English-law-does-not-recognize-process-patents bias rears its ugly head once again.

    Sorry Ned, you are (once again), trying to make the process category a poor stepchild to the hard categories. Just not allowed.

  72. Fish, the SC has made it clear at least to me that a practical application has to be something physical.

    No Ned – you are expressly wrong on this. See (of all things), Benson and the famous line of what that decision does NOT so hold.

  73. Ned as you know, the EPO issues program claims and business method claims every week. The Art 52 “as such” restriction renders ineligible only such subject matter “as such”. It is a relatively coarse eligibility filter which skilled scriveners know how to get past. It is when it comes to obviousness that your carrier claims and Beauregard claims will fail. Non-obviousness outside of the ambit of the useful arts doesn’t count towards your patentability over the art.

    This is not the same thing as deeming stuff to be part of the prior art. The EPO has been there, tried that, and moved on to a more robust line of legal logic.

  74. Just as MoT is no guarantee

      remember:
      Bilski: MoT not required,
      Prometheus: MoT not sufficient

    Made by man is likewise no guarantee.

    It must be effectively different than something in the warehouse of nature which the Supreme Court has implicitly read from the direct words and power of congress in 101.

    Them’s the breaks, kiddies. Learn to deal with it.

  75. Useful end: something physical, something that can be made, used or sold, something that can be imported.

    Can one make hope?

    Can one disassemble risk?

    Can one sell love? (Well, that is a euphemism, not so?)

  76. 6,

    It is an unwarranted assumption.

    Malcolm still has never addressed how his pet theory even accommodates the legitimacy of claims with only old steps, let alone old steps with new thoughts.

    I see that logic still befuddles you.

  77. In the European Patent Convention, the eligibility section is Article 52. It has two paragraphs. Both are important. Here they are:

    (1)

    European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application.

    (2)

    The following in particular shall not be regarded as inventions within the meaning of paragraph 1:

    (a)

    discoveries, scientific theories and mathematical methods;

    (b)

    aesthetic creations;

    (c)

    schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;

    (d)

    presentations of information.

    (3)

    Paragraph 2 shall exclude the patentability of the subject-matter or activities referred to therein only to the extent to which a European patent application or European patent relates to such subject‑matter or activities as such.

  78. Let us consider “Product of Nature” for a moment. Is this not a form of prior art? I ask the question because of the famous Canadian case where a farmer’s field was apparently contaminated with Monsanto’s patented variety through sexual reproduction.

    If Product of Nature is not based on prior art, but simply based on the product being found in nature, then the discovery of Monsanto’s patented variety in the farmer’s field should have been enough to invalidate Monsanto’s patent.

    Instead the farmer, who replanted and had been replanting for 50 years past, was held to infringe when he replanted his contaminated field.

  79. It is written above:

    “that which is previously “unknown” (at least to any other human) and thus “discovered” by the inventor cannot be part of the “prior art.”

    and there followed a discussion on the Doctrine of Inherency.

    But I’m left not fully satisfied. You see, under the EPC the prior art includes everything “made available” to (at least one member of) the public anywhere in the world by written or oral description, by use, or in any other way and yet, nevertheless, Exxon got a not invalid patent on a new and not obvious use of its known conventional corrosion-inhibiting motor fuel additive. Exxon discovered that the additive was reducing friction all the while it was inhibiting corrosion, and claimed its use as a friction-reducer.

    Which is fair enough, right? After all, what Exxon discovered was new for the public, not obvious, enabled and seriously useful. The discovery promoted progress in the useful art of helping fuel formulators to get motors to run better.

    The Doctrine of Inherency is not as simple as it might seem at first blush.

  80. Ned, I have several times now warned you (even in your idol Frederico’s words) that “principle in the abstract” had become such a nose of wax, that its meaning from one case to another could not be trusted.

    Hmmm. Much like our discussions once they edge into the territory of your third party interest, you tend to tank the discussion.

  81. Fish, and that is the point.

    Thus, if we veiw the matter from a 112 point of view, is there anything wrong with a claim to isolated DNA of a certain sequence? Is it definite? Is it enabled? Yes,

    So, where is the vice? Where?

  82. Fish, the SC has made it clear at least to me that a practical application has to be something physical. Thus manipulating risk is not. Updating an alarm limit is not. Calculating binary from BCD is not.

    Price is not, and this is the vice of State Street Bank. That court justified a claim on producing the improved price.

  83. The approach proposed in the poll is reminiscent of the practice to deal with the so-called “exclusions from patentability” in Europe. However, they key difference is that over there a statutory basis exists that justifies operating in this way and the judiciary simply (?) had to develop a framework (subject to considerable criticism by some parties, I might add) so that said statutory provision could be applied.

    Considering the way the law is drafted in the US, I find it difficult justifying such a change in attitude towards prior art as mere “legal evolution” of the concepts laid down in the patents act.

  84. EG, I do not think I misunderstand Morse. I have long argued that the statutory basis for Morse is 112, not 101. Morse even says so when it talks about why claims of the scope of claim 8 are wrong. The claim is so broad as to be to the principle in abstract, and the inventor has not described all methods and means of carrying out that principle.

    So, when the SC talks about "principles in the abstract" (laws of nature), these are NOT 101 issues at all, but 112 issues.

    EG, take Wyeth v. Stone. The claim is to cutting ice uniformly using any machine. What is the problem with this claim but enablement?

  85. Magic words (“composition of matter”) can’t suffice to confer eligiblity by themselves.

    Magic words “made by man” also cannot suffice.

    Think: a process of desalinating salt water.

    (or to step away from the tendency to conflate the timing of 102/103, the de-fghadlgling of kfdhalgdkf, where EXACTLY like the words in Chakrabarty, kfdhalgdkf is though just discovered)

    Any intellectually honest replies are welcome.

  86. The elephant in the room (Ned, no comment?):

    even when previously unknown or discovered

    Straight out of Chakrabarty and shoots both the Ned and Malcolm dogmas all to h311.

  87. Agreed.

    At time the SC's explanation of it rationale leaves a lot to be desired. Funk Bros. is one. Bilski is another.

    The original "principle in the abstract" case in the US is Wyeth v. Stone, where the claim was to any "machine" however constructed to cut ice into uniform size.

    "It is equally clear, however, that a valid patent cannot be obtained for a process which involves nothing more than the operation of a piece of mechanism, or, in other words, for the function of a machine. The distinction between the two classes of cases nowhere better appears than in the earliest reported case upon that subject, viz., Wyeth v. Stone, 1 Story, 273, in which the patentee claimed as his invention the cutting of ice of a uniform size by means of an apparatus worked by any other power than human. This was said to be a claim for an art or principle in the abstract, and not for any particular method or machinery by which ice was to be cut, and to be unmaintainable in point of law, although the patent was held to be good for the machinery described in the specification."

    Risdon Locomotive Works v. Medart, 158 US 68 – Supreme Court 1895 at 77

  88. and what is the definition of a “practical application”?

    and where is “practical application” found in 101?

  89. Ned,

    Like others, you’re misinterpreting what O’Reilly v. Morse really addresses which isn’t patent-eligibility under 35 USC 101, but “enablement” under 35 USC 112, 1st paragraph. That’s why SCOTUS wouldn’t let Morse claim any manner of electronic communication becuase he had only exemplified the telegraph.

  90. Yes, things inherent in a reference, but not explicitly disclosed, are prior art. Something heretorefore unknown or not derived or approximated is not a prior art reference.

  91. Dennis,

    What’s in a reference is very different from say “natural phenomena.” For example, a reference may not recognize that a particular composition would inherently be say thixotropic, but from else the reference says (e.g., viscosity, ingredients present, etc.) tells you that this composition would be thixotropic.

  92. Fish, a method that includes data gathering physical steps that are not used for anything practical is abstract. Why? Because the lack of a practical application. Mayo is an example.

    A method that uses conventional objects and machines but which does nothing new is abstract: e.g., spinning a prayer wheel a sufficient number of times so that one sins are forgiven.

  93. Ned: The SC in Morse was not so much concerned that Laws of Nature be in the public domain as they were in making sure that patents were granted to practical applications. Thus the coined the term “principles in the abstract.” That is the vice they seek to avoid.

    The same is true of Funk Brothers, in fact. The dissent does a better job of explaining the problem with the claims in that case (claiming desired function at the point of novelty).

  94. But Dennis, all that the SC requires is that the claims not be to the principle in the abstract, but to a practical implementation such as in terms of a new machine, a new physical process (MOT), a new manufacture (Chakrabarty); or a new composition of matter. It is not so much that Laws of Nature are in the “public domain,” but that the patent laws are limited to things made by man.

  95. Ryan: he gene in myriad is patent eligible, in that it is a composition of matter.

    I would say at least some of Myriad’s claims are patent eligible because they are structurally defined, useful compositions of matter that were made by man. Magic words (“composition of matter”) can’t suffice to confer eligiblity by themselves.

    However, it is not patentable in that it makes a modification to a naturally occurring molecule that would have been obvious to a PHOSITA.

    What is the policy rationale behind your proposed rule? If I discover a new chemical in the liver of an Antarctic starfish that was never described before, and then I modify it in some way, thereby creating something that never existed before, and I show that it has eligible utility (it cures certain types of baldness, for instance) … what is the policy behind denying me a patent on that new, non-obvious modified chemical?

  96. Ryan, I think this whole doctrine is mightily confused. The SC in Morse was not so much concerned that Laws of Nature be in the public domain as they were in making sure that patents were granted to practical applications. Thus the coined the term “principles in the abstract.” That is the vice they seek to avoid. All that one requires is that the claims be limited to a machine, physical process, manufacture or composition, and not to something ephemeral, like the very idea itself.

  97. One major problem with the Supreme Court’s formulation of these exclusions is that they did not provide a full definition. The way that I used these is intended to be in parallel with what the Supreme Court has done.

  98. a method which includes physical steps and a mental step is an “abstract idea”?

    I was addressing the legal definition of “abstract idea”. That definition, whatever it is, certainly includes “thoughts” or “mental steps”.

    However, turning to your question directly, a claim to a method that recites only convetional physical steps and a new “abstract idea” (e.g., mental step) is effectively a claim to the abstract idea itself.

    Consider:

    1. A method comprising
    a) consuming a cup of water and
    b) thinking about [new useful fact].

    Step a is a physical step. It’s patent eligible (anticipated without more limitations, of course!!!).

    Step b is an abstract idea. Now, unless you don’t need water, you infringe this claim when you think about the new fact. The claim is therefore effectively a claim to thinking about the new fact. That’s very simple, straightforward logic. It’s why Prometheus was a 9-0 decision. There’s no way to “get around” it, logically, and the claims in Prometheus were indistinguishable from that claim except that instead of “consuming water” they recited another physically transformative (eligible) step that was old and unpatentable by itself.

  99. “Why do you assume that?”

    It isn’t an assumption brosensky, it is an observation about what the effect of the claim is in the real world.

    You can make this observation fairly easily in the factual situation surrounding the Prom case. As MM has told you many times, there are actual people walking around on the planet earth performing a test. The test is as old as the hills. They’re performing it. A patentee comes in an informs them of some facts. Magically what they were doing now becomes infringement for a subsection of the tests they’re doing. Effectively the patentee has secured a proprietary right to the facts disclosed in the patent. This is an OBSERVATION about what the practical effects of the patent’s claim ACCOMPLISHES.

    I mean seriously bro, you’ve been talking about this subject for a year, how are you still so in the dark about what MM is talking about? You seem to read like every single one of his posts, do you ever take like 5 minutes to think about them? Put a modicum of effort in and you can stop asking these tar ded questions you make a habit of asking.

  100. The reason why we are in the precarious position we are in today is because prior art is defined too formalistically. Based on first principles, prior art should be anything that belongs in the public domaino including laws of nature,and natural phenomena. When we litigate issues under 101, it is because we intuitively know that they are not patentable, but don’t have prior art to make out a claim. 101 really should just be a low bar for patent ELIGIBILITY not patentability. Patentability should be dealt with using 103 instead of 101.

    The gene in myriad is patent eligible, in that it is a composition of matter. However, it is not patentable in that it makes a modification to a naturally occurring molecule that would have been obvious to a PHOSITA. If we could use anything in the public domain as prior art under 102 and 103, the 101 problem would largely be solved. Of course, this would likely require amending the patent laws to redefine what can be prior art.

  101. Dennis, what exactly do you mean by “natural phenomena?” Is fire an example?

    So, I discover that if one moves a stick having a certain compound over a rough surface at a certain speed that it will ignite, have I discovered a natural phenomena?

  102. Correction: only includes mental steps.

    Tell me Malcolm, if you dare, what is the controlling state of law that has mental steps and more than just mental steps in a claim?

    Can any claim legitimately include mental steps as a step?

    Oh, and feel free to address the fact that machines don’t actually have mental steps (you know, use that great word – even if misspelled for the blogs- ANTHROPOMORPHICATION.

    Thanks.

  103. “The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness.” In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995)

  104. EG, in a sense it was not Flook, but Morse, and in a sense, not Morse as well, for Morse was only quoting Nielson, a British case.

    What the SC meant in these cases is that one cannot claim a Law of Nature (including a mathematical algorithm), and that prohibition includes claims that practically wholly preempt subject matter that is legally in public domain.

  105. You do agree that a claim which recites just an old step and a new thought is effectively a claim to the new thought itself, right?

    Why do you assume that?

  106. What is the controlling state of law concerning business methods, any type of technology requirement and the useful arts, Malcolm?

    Answer honestly, if you dare.

  107. None of the above.

    If I discover the association be X and Y, that may be a Law of Nature or Natural Phenomena, but it is not prior art because such is defined in 102. The only possible basis is 102(f), but even that is suspect because it is posited that it was I who made the discovery.

  108. I agree that this “prior art” business of algorithms is improper. I think what is odd about it is that there is an extra step that is attempted that breaks the claim down rather than treating the claims as a whole.

  109. I know you’ve lost the argument

    Pretty sure that’s not how logic works, EG. My Dad taught me a bit about that.

    You do agree that a claim which recites just an old step and a new thought is effectively a claim to the new thought itself, right? Certainly that’s true with respect to someone freely practicing that old, eligible step. If you can explain why it’s not true, go ahead. You’ve had years to come up with a refutation and you’ve used every excuse in the book to avoid presenting it. Maybe it’s time to just admit the truth instead of attacking the messenger (be it me or Justice Breyer or, frankly, every educated person on the planet who has spent any amount of time thinking about the question).

  110. One question going forward is whether those non-textual exclusions should be treated as “prior art” in the obviousness analysis.

    Question: Which non-textual exclusion should count as prior art when considering obviousness? (Check all that apply.)

    I’m not sure the question is even applicable after Prometheus but, generally speaking, “treating X like prior art” seems to go way beyond the call of duty. Why not simply ignore it? I don’t see what is gained by “treating” an undeniably new, non-obvious mental step as part of the “prior art”.

    The Supreme Court in Prometheus seemed to draw a line and say that eligibility considerations should be made under 101, although the analysis is nearly identical, as is the outcome (and there is the benefit of ignoring the illogical “non-textual” parts of 103, i.e., the “secondary considerations”). Briefly, when ineligible subject matter is recited as a claim element, one needs to look at the rest of the claim to determine whether there are non-conventional (i.e., new, non-obvious) eligible steps which might rescue the claim.

  111. Sorry Malcolm, when you resort to such “low road” tactics as these, I know you’ve lost the argument and the debate is over.

  112. what is the definition of an “abstract idea”?

    At the very least, it includes any mental step. That’s pretty much established. Likewise, concepts like “love”, “money”, “credits”, “obligations”, “trusted”, “privileged”, “friends”, “copyrighted”, etc.

    definition: thought of apart from concrete realities, specific objects, or actual instances

  113. I could “understand” it if it were so bro. Your nobel prize winners routinely draw a distinction between what they do and what engineers come in and do with their work downstream. Why you ha ting on their world view bro?

  114. Was trained well by Dad, a former patent examiner and patent attorney, to understand these differences.

    Have you figured out yet why a claim in the form [oldstep]+[newthought] is effectively a claim to the new thought? I think Dad let you down there.

  115. Thanks, bja. Was trained well by Dad, a former patent examiner and patent attorney, to understand these differences.

  116. Exactly. You made the point much better than I did. You can’t claim the idea, phenomena, or law, only its application. So anticipation under 102 is not the issue, but obviousness under 103. But, if everything that is unknown is prior art, then everything is obvious.

  117. Aren’t they all inherently anticipated since the underlying physical interatctions existed before the discovery or before the components of an invention were assembled in a new and useful way?

  118. Dennis,

    I’m assuming we’re not talking “novelty” under 35 USC 102, but instead “obviousness” under 35 USC 103. If you talking “novelty” under 35 USC 102, , yes there would be anticipation based on “inherency.” But in Parker v. Flook, we’re talking about obviousness under 35 USC 103 where SCOTUS treated the previously unknown algorithm as part of the “prior art” (improperly in my view).

  119. It’s sad that you don’t understand that science is a useful art. You’d think that the PTO could attract brighter personnel.

  120. “This is the advancement of the useful arts that patents are meant to encourage.”

    What you’re describing sounds less like the advancement of the “useful arts” and more like the advancement of “science”. Sorry bro. :(

  121. Isn’t “neutering” the point in excluding things from patentability? Apparently, some people consider that to be a good thing.

  122. Making previously unknown “abstract ideas,” or “natural phenomena” part of the “prior art” was the great mistake made in Parker v. Flook, and is in conflict with 35 USC 103. Put it this way, that which is previously “unknown” (at least to any other human) and thus “discovered” by the inventor cannot be part of the “prior art.”

  123. We’re assuming that they’re newly discovered and are the piont of novelty of a claimed invention, right?

    Then none. These “laws” are actually appoximations of natural phenomena or abstract ideas, and as new discoveries are made and new paradigms considered, the flaws in those approximations as shown such that new approximations are derived or formulated. This is the advancement of the useful arts that patents are meant to encourage. To declare all new discoveries or paradigms natural laws or abstract ideas is to neuter the patent system.

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