How to Write a Patent Application (Second Edition)

I just received my copy of Patent Attorney Jeffrey Sheldon‘s book “How to Write a Patent Application – Second Edition.” Sheldon has been regularly updating the book since its original release 21 years ago. I have the ring-bound edition from PLI, but the somewhat cheaper Kindle Edition is also available from Amazon ($329.41).

It is not an exciting reading, but the book does provide you with straightforward practical advice on how to draft and file patent applications. Chapters include:

  • Introduction
  • The structure of the patent application documents
  • Electronic filing of patent applications
  • Working with inventors
  • Pre-filing patentability searches
  • Drawings (formal requirements and informal advice)
  • Claim Drafting
  • Specification
  • Information Disclosure Statements
  • Design Patents
  • Provisional Patent Applications
  • Plant Patents
  • Patent Applications on Electrical and Electronic Inventions
  • Patent Applications on Software and Business Method Inventions
  • Patent Applications on Chemical Inventions
  • Patent Applications on Biotechnology
  • Filing Foreign Applications Based upon a US Application
  • Reissue Applications

One nice aspect of the tome is that each section includes numerous examples of how patent attorneys normally operate. The book is likely to be most helpful for new patent law professionals although the up-to-date information on case law makes it valuable for experienced attorneys who don’t want to delve into the depths of Chisum-on-Patents.

218 thoughts on “How to Write a Patent Application (Second Edition)

  1. No comment here, McCracken?

    Do you implicitly support the baseness and enmity evident here by Malcolm?

    WWJD?

  2. anon: “Well Malcolm, 101 Integration Expert asked you to apply the Prometheus-generated Office protocol to the claims.”

    MM is intellectually castrated on the issue of “Integration Analysis”

  3. Well I’m moving on to that part. You’re welcome to simply withhold judgement if you don’t have the ba lls to make the call either way.

  4. “Any Questions?”

    Yes, what are we to do when the applicant is not as forthright with us as the patentee was in Prom? What do we do, for instance, if they try to hide the abstract idea from view so that their claim doesn’t die in 101? What do you propose be done in that circumstance IE?

  5. “, in light of the Court cases presented, where do you get your authority to go on a abstract idea witch hunt when presented with a fully integrated claim? ”

    The prezzy my nezzy of the denntz? You know, ultimately.

  6. 6: “If they be “truly” integrated I have little problem. The only
    > issue I take with your “integration analysis” is that you make
    > “integration” trivial. If it is non-trivial then sure, your
    > “integration” might not be so bad.”
    >
    > Well, my “Integration Analysis” is the the “Integration Analysis” of
    > the Supreme Court of the United States of America. While the Court in Prometheus did explain Diehr’s claims were “Integrated” and thus statutory subject matter, the “fundamental precept” of the analysis can be traced back to at least  Aro Mfg. Co., Inc. v. Convertible Top
    > Co. – 365 U.S. 336 (1961); Where the Court made it clear: “ that there is no legally recognizable or protected “essential” element, “gist” or “heart” of the invention in a combination patent”..Ibid
    >
    > A combination by it’s nature is “integrated”.  And a process is
    > essentially a combination of steps. What this means 6 is that you can’t legally recognize or label the invention as being one element, or even the “heart” or “core”. As Diehr told you, you are required to view the claims as a whole. This is as applicable to processes as to any other category under section 101, because while the Aros case was about a machine, a process is also a physical thing within the realm
    > of science and technology, even if it has no machines or mechanical parts. And while Prometheus did say you can’t simply state an idea and apply it, there has to be an “idea” so stated in the claims in the first place for you to identify. Prometheus had no problem identifying the Judicial exception in that case, a LoN. The correlation was manifest. But  If you have to go looking for the idea, it’s most likely because it’s “integrated”, and you have veered off the legal course of Supreme Court jurisprudent and gone on a witch hunt.
    >
    > Any Questions?

  7. so just to be clear

    LOL – nice attempt at deflection. We haven’t got to that part yet, 6 – we are still waiting for your awesome FAIL to be presented.

  8. Leopold, awww, you don’t like my analogies?

    Perhaps you should think about your posting habits – the analogies – as colorful as they are – fit.

    And speaking of posting habits, what is it that attracts you so to Malcolm?

  9. Hey, sorry to have offended you, but your quotation mark tic is just weird. Not nearly as weird as your buddy anon’s recent obsession with blood, cheerleader outfits, and petroleum jelly, of course. (Man, do I wish that I was making that last part up.)

  10. “The district court dismissed the suit on a Rule 12(b)(6) motion because the claims were deemed patent-ineligible; that motion came before any facts could even be garnered in discovery for a motion for summary judgment.”

    So they dismissed the case for failure to state a claim because the claims were ineligible (I noticed that in the decision), but this is not “summary judgement” (that I was not aware of, as I had thought the motion they used was simply a form of summary judgement) because the two are separate motions you can make and nobody got a chance to even make that motion. Ok, fine, the dismissal may well be premature, I’m open to the possibility.

    Doesn’t change that the claim is self evidently ineligible as the DC held (though under a slightly different rationale). And if a court wants to save itself the further trouble I don’t see what the problem is, other than, omg, we didn’t have any discovery to garner some facts! Oh noes! And a federal judge thinks there might be some facts material to this pure question of lawl. It is my opinion that the pure question of lawl before us can be answered very easily without them, Rader’s nonsense the contrary. Perhaps he should have noted what he conjectured that those facts might be which will be pertinent.

    Though yeah, I would have thought they would have just done summary judgement, but apparently they had other concerns that wanted them to just get er done. Meh, I care little. If they want to reverse because of the procedure then fine. But they shouldn’t be all, “I’m reversing on the merits” if they’re really just taking issue with the procedure. It looked to me like they reversed on the merits. But hey, I didn’t read it all that deeply, it’s pretty long.

  11. Alright bro, so just to be clear, you’re still of the opinion that this patent will be upheld if it goes to the supremes right?

  12. “Automatic door opening mechanisms were NOTORIOUSLY old in the art”

    Well ok, perhaps someone should have made that of record. In any event, even 30 years later the cream of that art’s crop didn’t produce any reference showing such. Nor did they show the combination of the other steps besides the Arrhenius equation. Sorry bro, but they were a long way from 103ing it, much less 102ing it, even if they ignored the Arrhenius equation. Regardless of whether or not they “should have been” or not, the record shows what the state of the art was taken to be and it isn’t even close. I also heard no tell of any official notice being taken.

  13. “Which is what the Court has legally defined abstract ideas to be. ”

    Oh, I missed that, perhaps you could cite their “defining” it in such a way?

  14. 6: “When you’re no longer preempting any judicially excepted subject matter. You’re really making this more difficult than it needs to be.”

    In sticking with the topic, the abstract idea exception, it is evident you are not preempting an abstract idea if the claims do not recite a fundamental truth; an original cause; or a motive. Which is what the Court has legally defined abstract ideas to be. Since you insist on going further, ( and without legal authority) it is obvious you are the one making it more difficult than it needs to be.)

  15. So 6, in light of the Court cases presented, where do you get your authority to go on a abstract idea witch hunt when presented with a fully integrated claim? I will tell you. From no where because you have no such authority from the Office, Congress, or the Supreme Court of the United States of America.

  16. 6: “Ok, well I tell you what, as soon as Rader acknowledges his DUTY to go ahuntin’ for the abstract idea and not just take both of the party’s word for it when it comes to finding it, then I would bow to the superior skills of abstract idea finding by Rader. ”

    101 Integration Expert: You are wrong. The Chief Judge is right. The Supreme Court does not say you are suppose to go hunting for abstract ideas. First, the Court has legally defined abstract ideas as Intellectual concepts such as : ” a fundamental truth; an original cause; a motive. The Court has said “no one can claim in either of them an exclusive right.” .. Because “they are the basic tools of scientific and technological work.” This would apply to laws of nature, physical phenomenon, and other scientific truths, as well. See ( Rubber-Tip Pencil Co. v. Howard, 20 Wall. 498, 87 U. S. 507, Le Roy v. Tatham, 14 How. 156, 55 U. S. 175, Funk Bros. Seed Co. v. Kalo Co., 333 U. S. 127, 333 U. S. 130 )

    And in ALL the Court cases previously cited the abstract intellectual concept that was claimed was manifestly evident, i.e. clear or obvious to the eye or mind. Therefore the Court did not go as you say, “a hunting” nor instruct any other lower court to do so.

  17. You first have to get the Supremes to take their collective finger out of the 101 nose of wax.

    As to the chances of that (absent a very messy and public demonstration) can be seen in Prometheus and their attachment to their implicit readings (and note – again – this is another thing that I corrected Malcolm on and that he has never had the nuts to simply say that he was wrong and I was right).

  18. Fish scales, I am sure that EG meant it in the kindest way – like, go and study patent law like that gentleman Fish scales so that you can contribute to a worthwhile conversation.

    And EG is Eric Guttag, a respected (by most sane people) professional, but who (in Malcolm’s eyes) has been ‘tainted’ by an association with Gene Quinn, whom as far as I know, Gene has never posted here (but that does not give Malcolm pause for his denigration of Gene and Gene’s pro-patent beliefs).

    LOL – but look who the first one is to go all QQ if the Left is painted honestly as attacking the patent system…

    C’est La Vie

  19. NWPA: ” I thought his arguments were quite excellent.”

    The Expert Judge of the Expert Court put on a 101 Tour De Force!

  20. LOL – way to do that projecting your own angst thing again Malcolm. I just happen to like colorful metaphors (and you have to admit, I pretty much nail it every time too).

    You really need to get into a line of work you can believe in and try to salvage that soul that the Good Lord blessed you with.

  21. EG said in reply to 101 Integration Expert…
    “101 IE, I’ve scanned through this Ultramercial remand opinion (enclosed) and it is HUGE for the computer software world.”

    Yes, this is just the type of leadership we needed from the Expert Judge!

  22. As if insulting the man was not enough immediately after his father passed away, do you really feel the need to show how classless you are Malcolm?

    And likely, you won’t even think there is anything wrong with your post.

    Just standby and [shrug].

    Meanwhile, you continue to either avoid making any attempt at substantive commenting or burning down your agendas when you do venture into such an attempt.

  23. The federal circuit has been slowly chopping away at the doctrine of claim differentiation; not sure how much is left of it.

  24. EG’s dad was the Atticus Finch of Quotation Marks. Too bad he isn’t around to show you a thing or two.

  25. Thanks LB. From what I see though, day after day, the function (and value) of dependent claims written in the USA is to widen the claim from which they depend, using a theory of claim differentiation. Thus, if the independent claim is directed to a stent, being something invariably made from either stainless steel or nitinol, a typical dependent claim calls for it indeed to be made of stainless steel or nitinol.

    Wrong again, am I? I hope so.

  26. except patent prosectors griftin’

    Hmmm, cheerleader Leopold once again volunteers me to obtain ‘help’ and ignores the obvious pleading from Malcolm – that he needs desparately to get into a profession that he can believe in.

    Leopold, serious question: why do you ignore and not post comments to the person who most needs help (which in case you cannot see, is Malcolm)?

  27. other than…

    LOL – as typical, your ‘other than’ is wrong.

    That petroleum really does mess up more than just your vision…

  28. LOL – Malcolm talks about mutual stroking and out pops Leopold, cheerleader outfit and all.

    Sooo sweet.

  29. The responsibility essentially then for weeding out the software and other computer-implemented inventions that are not deserving of patent protection will then rest with 103, 102 and 112 — where it belongs. Yes, that is more work for the Patent Office, but with better prior art classification and better training of examiners (both technically and on patenting) it should be no problem.

  30. Everything else besides the dip into the Leopold pool of blood that you said was correct.

    I have no idea what that means, other than that you really need to get some professional help.

  31. MM, I am first and foremost a person with intellectual integrity.

    And second, I’m a person with really high standardized test scores!

  32. EG, you seriously need to drop the “quotes” you sprinkle “through your” comments. You clearly don’t know “how to” use them.

  33. Wrong? Oh really, Fish? Because anon tells that I am right. Which of you is correct, I wonder.

    You see, above, anon reports that I am wrong, but “only” in that I assumed that somebody would tell me I’m wrong. Thus, in all other respects (it seems) I must be right.

    Are you telling us (and in this does anon agree with you) that also for the USA:

    “…you need, for every dependent claim, a story in your specification of precisely what enhancement of which technical effect flows from the more specific technical feature combination of each such claim”.

    Can you confirm? That would be very helpful. Thanks.

  34. MM, I am first and foremost a person with intellectual integrity. Even if I believed that information processing methods shouldn’t be eligible for patentability, I would not be making the arguments that you and Lourie (Stern, Lemley, Posner, Stevens, Douglas etc.) make.

    I would go to Congress where the argument belongs.

    Now what is your excuse for sacrificing your intellectual integrity for your “cause?”

  35. Your heritage is that you are a dirt bag

    Hey, Night Wiper, how many other “liberal Democrats” do you know that share your bizarro views about what qualifies a Federal judge for “dirtbag” status?

    I know Sillycon Valley has more than its fair share of clueless flakes who think everyone needs to get out of the way and enjoy the awesome “progress” they are trying to bring to lazy people everywhere. But your attitude is a new one. Is it just self-interest or do you really believe that the loss of strong patent protection for computer-implemented j–k is going to make a hill of beans of difference to anyone except patent prosectors griftin’ off the current system?

  36. EG,

    You’re wasting your time with this dummmmy. He is the classic example of, “I’m not a lawyer, but I play one at the PTO and on the internet.”

  37. 6,

    Your ignorance of the procedural posture in this case is again showing. As anon would also tell you, read the opinion more carefully. The district court dismissed the suit on a Rule 12(b)(6) motion because the claims were deemed patent-ineligible; that motion came before any facts could even be garnered in discovery for a motion for summary judgment. In fact, page 6 of the slip opinion makes clear that Rader sees the potential for factual issues to arise even in this case.

  38. Nice strawman.

    Careful though, as you should be aware tha thandling straw may cause your agendas to spontaneously burst into flames.

    Oops – too late.

  39. LOL – that’s some squirming you are doing 6. You think that article is the only article? the dispositively defining article? Your continual broadcasting of your ignorance on the topic is like pouring yet another gallon of gasoline on the bonfire.

    What next? Announce that you are not going to provide what you have said you have already ‘done’ twice?

    LOL

    Your FAIL is transparent.

  40. That does not explain why Lourie’s concurrence should have been long and detailed and specifically track the plurality opinion.

  41. it’s rare that a question under Section 101 won’t have factual disputes that make summary judgment inappropriate.

    Depends on the claim. Is it “rare” that ineligible claims are asserted?

    Some claims are very easy to attack under 101. Did you notice that Rader seems unaware of this fact, EG? Or at least he seems very reluctant to admit it. Why do you suppose that is, EG?

    Try this claim on for size, EG:

    1. A method for determining the likelihood that a patient has a cancer, comprising:

    obtaining a blood sample from said patient and measuring the level of glucose in said blood sample;

    weighing the patient;

    comparing the measured glucose level and the measured weight to pre-determined values on a chart, wherein the chart comprises information relating the measurements to a likelihood of cancer.

    Go ahead, EG. What do you tell your client when he asks you if that claim is eligible? Explain your reasoning.

  42. if he though Rader’s opinion should track the plurality opinion, why shouldn’t his concurrence

  43. “that’s not something you even can disagreee with,”

    You don’t even know what the article’s premise was do you? Or did you write that article? Because you’re the only one I know of that is that obsessed with the “ladders”.

  44. Lourie’s concurrence then should have been long and detailed and specifically tracked the plurality opinion.

  45. I wouldn’t say I’m trying that hard.

    LOL – you are suceeding in saying nothing. Not sure if you want to brag that you aren’t trying that hard.

    What you are trying hard to do is actually do as I asked you to do, you know, defend your B$.

    Although I disagree with its premise somewhat.

    LOL – that’s not something you even can disagreee with, 6. It IS. That’s like you ‘disagreeing’ with gravity and willing yourself to float to the moon. Your shiny hat needs A LOT more buffing to reach that state.

  46. The USSC specifically noted that the applicant believed his process that the equation was attached to was new

    As a whole – 6. You missed that element.

    Thermocouples do as they had done: provide a continuous signal.

    Automatic door opening mechanisms were NOTORIOUSLY old in the art – and thus not even at issue in your attempt to divide and conquer here.

    Quite in fact, the very notion of divide and conquer was thrown out by the Supremes.

    You remain clueless.

  47. Why you think it being lower on the abstract ladder scale somehow makes it magically not an abstract idea is quite beyond me anon

    Thanks for the confirmation 6 that you are clueless as to what the ladders of abstraction are and that your ‘pet theory’ is complete B$.

    Even one rung down has significance.

  48. Why do you feel like you have the authority to tell me, or MM, to do a task?

    Translation: “Wah, Wah, Wah, someone is trying to hold us accountable for the B$ we post.”

    Answer: LOL. As I have indicated as to the path to better blogging: Don’t CRP if you don’t want your noses rubbed in your own CRP.

  49. I wouldn’t say I’m trying that hard.

    “All three of my points remain uncontested.”

    just to ease your troubled mind:

    1. I read the article all about the abstract idea “ladders” in the JPTOS about a year ago. I’m pretty sure I have a pretty darn good grasp of it. Although I disagree with its premise somewhat.

    2. whether it is a load of CRP or not, it is the lawl.

    3. I may well be, but your protests about my being ignorant of the lawl/process regarding summary judgement is quite false. I was informed of what EG tells me below before and Rader made passing mention in the case. I still don’t see any genuine issues of material fact that need resolving or needing any benefit of the doubt being given to the non-movant. In fact I don’t see anything other than two questions even remotely pertinent to this case, both of them being pure issues of lawl. Claim construction (maybe) and 101. Rader’s protests that there are only a few cases where there are none doesn’t seem relevant since this appears to be one of those few cases.

  50. Why you think it being lower on the abstract ladder scale somehow makes it magically not an abstract idea is quite beyond me anon. It would have to be pretty far down the ladder to not be an abstract idea. And the one I proposed a couple of times surely isn’t that far down the “ladder”. In fact, I crafted it specifically to avoid such.

  51. “Dodge the task”

    Why do you feel like you have the authority to tell me, or MM, to do a task?

    “6 – YOU are the one that said you had done this.”

    Yeah, I did, at least twice and I’ll get around to it again just for you to stfu.

  52. “In Diehr, we basically have separate elements of an old process”

    You may assert that but there was no showing on the record that the temperature reading and autoopening was an old process. Nor was it taken as a given. The USSC specifically noted that the applicant believed his process that the equation was attached to was new. And from the record, it certainly was. Other people have tried to dig up a ref to show it wasn’t new, 30 years after the fact, but they still haven’t shown a clear 102. They can barely find a 102 for one single element, and even that is arguable.

  53. Funny 6 – you are trying awfully hard to actually say NOTHING, rather than ‘I’m simply telling you what the law is as announced by someone else.

    Right up there with the vacuity of Malcolm.

    All three of my points remain uncontested.

  54. He appears to merely believe, as does Rader, that they shouldn’t go hunting. If they don’t go hunting, then the case turns out the way all the judges decided. It’s an easy case if they don’t go hunting, it requires no more than a sentence in the decision.

    It is argued x abstract idea is preempt but it isn’t and we’re not going to hunt for any other abstract ideas that might be preempt. Reversed.

  55. LOL – Didn’t I say that 6 reminded me of Malcolm?

    Dodge the task by asking the other person to supply the answer.

    Classic

    6 – YOU are the one that said you had done this. It is YOUR answer that will be under scrutiny because it is YOUR B$ that is going to be exposed.

    I have the bag of marshmallows at the ready.

  56. Nearly an hour before you typed your post at 10:51 I provided a suggestion below.

    D’Oh!” (said in the best Homer Simpson tones)

  57. I read all that in the decision and was well aware before this case. However, I didn’t note any factual disputes at issue in this case. The only dispute appeared to me to be whether an abstract idea was being preempt or not. A purely legal question to my mind. If you feel differently, then perhaps you can tell me which fact(s) (hopefully a disputed one!) are pertinent to the dispute.

  58. “available for the given fact pattern clearly shows how wrong he is in all facets of understanding, including at least:

    1) he does not have a clue as to how the idea of abstraction ladders work,
    2) his pet theory of ‘abtract and preemption’ is a load of CRP, and
    3) he is clueless in this case.”

    Lulz, why don’t you tell it to the USSC bro (and then tell them again when this case comes out exactly as I noted it would)? It isn’t me that is cramming it down your throat with authority. I’m simply telling you what the law is as announced by someone else.

  59. Alright I hear you as to what should have happened back in the day. But as of TODAY, instead of like 50-100 years ago, should the exceptions in the law be rescinded in their entirety and everyone be able to patent those 3 things?

  60. Read Lourie again: we should kowtow to the Supremes.

      Never mind that the purpose of the CAFC was to be the body that defined patent law…

    The problem is just that: the Supremes have mucked up 101 beyond anything recognizable. The nose of wax is twisted and mashed and has fallen off the face of justice.

    Go ask Alice.

      But as much as I would like to merely complain, here is an idea for a solution: Restore the CAFC to be the definitive judicial body for patent law – as intended, with the Supreme Court ONLY able to over-rule that body if the case has (and to the exact limit of) a constitutional question to be resolved.

    As the Supreme Court – in its own very carefully chosen words – has recognized the authority of 101 questions to be one of Congress’es words (that whole ‘implicit’ wink wink dance), clearly questions of 101 are NOT constitutional.

    In other words, if the Supremes want to stick their fingers in the nose of wax, their hand should be slapped.

  61. the archives detail Malcolm’s mistaken view on this matter and my correction of him.

    D UMPTY HAS SPOKEN!! BOW DOWN!!!

    They have quite screwed the pooch

    LOL.

  62. One thing that is striking about the Lourie concurrence is that he completely backed down. Rader tee’ed this up as a re-match and Lourie just wormed out of it. He didn’t square it with the other things he said. He didn’t challenge Rader. He just slunk into his worm hole.

  63. 6,

    anon is correct that you remain clueless as to how summary judgment works. Summary judgment requires that the issue can be resolved as a matter of law, and that there are no genuine issues of matter fact in dispute. That means that the non-movant (i.e., the one against whom the motion for summary judgment is made) gets the benefit of any doubts as to any factual disputes. And as Rader correctly observes in Ultramercial, it’s rare that a question under Section 101 won’t have factual disputes that make summary judgment inappropriate.

  64. Oh, I don’t necessarily consider a waste of elecronic ink, EG.

    In the present example, his lack of understanding of the ladders of abstraction has provided a clear metaphor for understanding what a ‘proper’ level of abstraction might be in regards to the courts wily-nily use of ‘abstract.’ If you can go no higher on the ladder, you may have claimed an abstract idea. Even the ‘go ask Alice’ plurality fiasco advocate sees that such is not the case here. And that is saying quite a bit that 6 (and company) refuse to hear.

    As 6 indicates, an improper view yields ‘gazillions’ of abstractions that litereally eviscerate the entire patent system. That he has to arduously go and ‘re-create’ something he has ‘done’ twice before when a higher rung abstraction is readily available for the given fact pattern clearly shows how wrong he is in all facets of understanding, including at least:

      1) he does not have a clue as to how the idea of abstraction ladders work,
      2) his pet theory of ‘abtract and preemption’ is a load of CRP, and
      3) he is clueless in this case.

    Look at him squirm and make excuses. Reminds me of Malcolm.

  65. Thanks, anon, you hit the nail square on the head with 6. He never understands he’s in way over his head with the law and court procedure. And you and I have wasted far too much electronic ink on him telling him why.

  66. Arrhenius equation being equated to all information processing methods is one of the great leaps the SCOTUS has made.

    I guess what we need is for the SCOTUS to realize that the information processing methods (including applied math) are created by man. They are something new. That distinguishes them from Prometheus and DNA, and the Arrhenius equation.

    That seems like one of the best arguments at the SCOTUS too. That the methods are new. They are not representative a natural law but a way of processing information that never existed.

    Even in Benson, how in the world they say a method to convert from one base to another is a scientific truth is a stretch. And, particularly when we are dealing with heuristic algorithms that are very different than the Benson method.

    Oh well…asking the SCOTUS to understand anything beyond a hunk of iron is probably not going to work.

  67. 6,

    It actually is NOT.

    AS I replied to you already, the abstract idea is not LONG.

    If it is longer than the ones already exhibited in this thread, then the abstract idea you wish to proffer is LOWER on the abstraction ladder.

    Thank you for proving my multiple points that
    1) you don’t have a clue as to how the abstraction ladder works,
    2) your pet theory is a load of CRP, and
    3) you are clueless in this case.

    Thank you a gazillion (plus one) times.

  68. LOL – and the best part is that the only new thing in Diehr was the GREAT COMPUTER BRAIN that used the (old) Arrhenius equation with (old) thermocouples and opened the (old) doors to obtain an (old) cured piece of rubber.

  69. 6: “In fact you might could put it this way, (judicial exception) + new and nonobvious invention yields eligibility.”

    101 Integration Expert: Actually that is not a fact if we are analyzing the claim for eligibility. The Court made it clear that the new of 102 and obvious analysis of 103 are separate from the question of 101 statutory subject matter. (See Prometheus.) In Diehr, we basically have separate elements of an old process, old machine(s), and an old math equation. However, when all the steps are “integrated” the old process of curing rubber is accomplished more efficiently. Thanks in no small part to the Arrhenius equation. The “efficiency” of the process is what’s new and useful. However, that “efficiency” brought about by the “integration” of all the elements, is a separate issue from what makes the process novel, and non obvious.

  70. 101 Integration Expert: “under your thinking you can reduce every process to an abstract intellectual concept and then say the claims ( steps) preempt that concept. ”

    6: “That’s not really true. Because when you try, you will for instance try to reduce a table to a “concept” but right there, you boinked up your analysis right out of the gate.”

    But a table is not a process. A claim to a table is a claim to an article of manufacture under the statute of 101. A claim to a process is a claim to a process under the statute of 101. Therefore your example does not apply. If you can present an applicable, intelligent, logical explanation why your analysis does not allow you to reduce every [process] to an abstract intellectual concept and then say the claims ( steps) preempt that concept, please let me know. Otherwise consider your analysis and approach discredited and in conflict with the statute and Supreme Court controlling case law on 101.

  71. No – he does not say that precedence demands the plurality be followed; he merely suggests that it BE followed.

    A ‘want’ and nothing more.

  72. Rader said it succinctly: there was no precedential value.

    Didn’t Malcol explain that?

    LOL – that’s right, the nutless wonder would not venture there.

  73. Should recent final decisions of the Patent Trial and Appeal Board where rejections of claims as being non-statutory abstract ideas were affirmed be reviewed by the PTO to make sure they were correctly decided and for the right reasons in view of Ultramercial v. Hulu?

  74. “C’mon 6 – is it really that difficult for you to actually come up with a statement of the abstract idea in the present case?”

    It actually is, it takes some work to do this case and this is my day off. So is tomorrow actually. I have some things to prep for. I’ll probably get around to it when D makes a post about the case.

  75. As I cited earlier on Amazon, PLI has no way to update the Kindle edition without re-purchasing the entire text every time. So much for ‘slightly cheaper.’

    The sad thing is I would LOVE to subscribe to a Kindle update of this book. Many times I’ve talked to PLI to no end. Are you listening?

    Patent law moves to fast for ‘buy me once’ editions. Your ring binder editions are great, can we party like it’s 1989?

    John

  76. What obligation does a Federal Circuit panel have to track a plurality opinion of an en banc decision?

  77. See the quote that I have supplied from Benson.

    See the lack of response from Ned regarding why Judge Rich was able to pursue his reasoning in the face of the dicta from Benson.

    See the link I provided from Peter Zura adding additional light as to why Benson was such a poor decision.

  78. – The Majority also supported the patentability of computer programs, stating that “a programmed computer contains circuitry unique to that computer” and “could be claimed in terms of a complex array of hardware circuits, or more efficiently, in terms of the programming that facilitates a unique function.” —

  79. doesn’t it return to the district court now for determinations of obviousness and novelty?

  80. The abstract idea is not LONG.

    If it is longer than the ones already exhibited in this thread, then the abstract idea you wish to proffer is LOWER on the abstraction ladder.

    Thank you for proving my multiple point that 1) you don’t have a clue as to how the abstraction ladder works, 2) your pet theory is a load of CRP, and 3) you are clueless in this case.

    Thank you a gazillion times.

  81. LOL – we (the royal we) are all ‘sooooo sorry’ because as I have explained, and you no doubt are aware, these pages are archived.

    I busted your chops once before for a false “I’ve stated this before” claim.

    That you choose to not once but twice claim to have done this before when it would be a VERY simple matter to explain in the immediate time frame only indicates that you are – once again – 1ying.

    C’mon 6 – is it really that difficult for you to actually come up with a statement of the abstract idea in the present case?

    We both know why you refuse to do so: your statement will show how low your ability is to understand the subject matter (as a low rung on the ladder would indicate), as well as show what a fraud your version of ‘gazillion abstract ideas’ is in regards to the overall scheme of the Court’s abstract idea exclusion.

    Just like Malcolm stridently avoided a substantive response to the challenge of providing a squaring of Prometheus to the precedent case most on point, the real reason you hide behind a “well I did this in the past” is because to do so now would throw your pet theory into a bonfire.

    You are every bit a coward as Malcolm – and your views hold just as little (in truth, zero) persuasiveness.

    LOL – you are ‘sooooo sorry’ indeed – just not the type of ‘sooooo sorry’ that you are thinking of.

  82. “Because if you had a clue, it would have been simple enough to simply state that abstract idea.”

    Um, as I’ve noted at least twice, it is LONG and involved. I cannot dredge it up from memory alone. And it is not simple to refind.

  83. “I am interested in that once again you are saying something ‘that you did’ when you have done no such thing.”

    I did it at least twice you re re. If you weren’t around to see it then I’m sooooo sorry.

  84. So then, in summary judgement, the court doesn’t have a responsibility to correctly resolve issues of lawl and appellate courts do not have a duty to review that decision de novo? Or do you simply believe that patents which cannot be construed validly by the DC are then immune to a 101 challenge on summary judgement?

  85. I am interested in that once again you are saying something ‘that you did’ when you have done no such thing.

    Exactly like I proved once before in the past by reviewing every thread.

    Yes, that too is archived.

  86. In other words, you have no clue.

    Because if you had a clue, it would have been simple enough to simply state that abstract idea.

    Thanks for the confirmation, 6.

  87. Simple answer with a simple premise: per our constitution, Congress and Congress alone should write patent law.

    What the Court should have done when offered the addictive power of writing patent law should have been to reject that offer from Congress as violating the separation of powers doctrine of the Constitution.

  88. “I do not think this analysis of Rader’s will stand.”

    Well be specific, is it because of the same issues I just took with it or something else? And if you agree it will not stand, then why sit and make fun of me for saying the same?

    “All of this reminds me of what the SCOTUS has done to the right of a jury. It is almost impossible to explain to someone in under an hour the jurisprudence on the right to a jury.”

    If that is your biggest QQ then fine, I’d let them have a jury. But I thought on issues of law judges just took over, eventually, anyway.

  89. “Why not bother to understand the procedural posture of the case, 6?”

    I understand it pretty fin well for someone who hasn’t had his hand held through the whole thing. If there is something in specific you think I ought to know about the procedural position then go ahead and let me know. So far as I’m aware, in this procedure courts still have an obligation to resolve questions of law, and on review the appellate body has an obligation to review those de novo. If I be mistaken in either, or if there is something else you feel impacts the case then put it forth.

    Like I’ve said already, if you really really really take issue with the DC throwing its hands up after not being able to find a claim construction that helps the patent holder at all then fiiiiiiine, but I do not believe that they should get a magical presumption of a valid claim construction simply because it is in this procedure and gets a presumption of validity. Patent holders should not be immune from a 101 contention by simply sitting on their hands. That would defeat the whole purpose of the procedure. And I also note, again, that this nonsensical claim construction decision even if adopted, would thus be applicable only to proceedings in court, not the PTO where you get no presumption.

  90. “So, I suppose that patent applications should include a section on “The Abstract Idea,” and “Other Ways To Accomplish the Useful Part of the Invention.””

    That’s one thing that might help you out on iffy cases.

  91. “Come now 6, you say that you have analyzed the matter. What is the abstract idea at issue.”

    I’m not “just saying” I’ve analyzed it, I did it at the behest of people already. I’m not redoing it all the time, it takes awhile and is work. Go and read the old threads if you’re interested.

  92. “Sorry 6 but that does not address anon’s point of you knowing when to stop because as anon says, ”

    I’m sorry that you subjectively feel that way IE, but brother it does address the “point” of “me” knowing when to stop. I’m smart enough to know when to stop in light of the information provided to me by the USSC. Other people perhaps are not smart enough to know.

    “because as anon says, “ALL patents can be divided into an ‘abstraction’ and extra-solution ‘steps.” ”

    Not really true, that is merely anon messing up the analysis. And I can demonstrate this for you in person if you so desire. I’ll charge a mere 100$ an hour. Well worth it to expand your mind.

    “under your thinking you can reduce every process to an abstract intellectual concept and then say the claims ( steps) preempt that concept. ”

    That’s not really true. Because when you try, you will for instance try to reduce a table to a “concept” but right there, you boinked up your analysis right out of the gate.

    “When do you know to stop? ”

    When you’re no longer preempting any judicially excepted subject matter. You’re really making this more difficult than it needs to be.

    “Fortunately the Supreme Court has given you a limit. It’s called “integration”. When the claims are “integrated””

    If they be “truly” integrated I have little problem. The only issue I take with your “integration analysis” is that you make “integration” trivial. If it is non-trivial then sure, your “integration” might not be so bad. Surely Diehr integrated Arrhenius into a properly eligible claim and came out unscathed. Perfectly fine. In fact you might could put it this way, (judicial exception) + new and nonobvious invention yields eligibility. That would probably be an acceptable “integration analysis” rule of thumb for you, since you have a hard time understanding the actual analysis.

  93. Be honest with me anon, do you think the three judicial exceptions ought to be simply rescinded in their entirety and everyone be able to patent those 3 things?

  94. “And then the problem comes in because the SCOTUS says, “well sometimes it could be (Diehr),”

    How is this a problem? Sometimes the only abstract idea at issue simply isn’t preempt. As in Diehr with the equation. In the instant case however, the abstract idea is there, ready for Rader to put his hunting hat on and go and find.

  95. I’ve posted it for you 2x already anon in past threads. You’ll need to start faving it, I’m tired of typing it out or re-finding it.

  96. And I would be remiss, not to note the absence of that voice of reason Peter Zura, whose 271 blog last posted an article now two years in the rear view mirror (mea culpa as I was just too giddy on the massive Myriad beatdown of Malcolm).

    In honor then of just how bad the Benson decision was:

    link to 271patent.blogspot.com

  97. NWPA,

    Is it any wonder that one of the main obfuscators on 101 on this blog (not to name any names [ahem, Ned Heller]), has a personal vendetta against the man who helped write the 1952 Act and who would have the most knowledge as to how to interpret that act?

    And yet, certain people would prefer to glorify the ignorant and those with other agendas over those with knowledge of the law.

    Willfully ignorant and arrogant: we will not let OUR implicit reading become a dead letter no matter how obvious it becomes that WE are writing law. The magic of ‘implicit’ is that there is not bottom to that rabbit hole – at least, no objective bottom. It’s an everlasting ‘we know it when we see it,’ keep-the-finger-in-the-nose-of-wax addiction-supplying ‘fix.’

    You have to want to clench your eyes tight and want not to see what has been going on. Alas, there is no shortage of people who want to do that.

  98. …it’s a corollary to the “WHATEVER” school of legal thought.

    You know, championed by the master of Vacuity: Malcolm.

  99. Just for the record: I do not think this analysis of Rader’s will stand. I think the SCOTUS is going to have to take a software/hardware case and what insane nonsense they attach to it will be the law of the land.

    All of this reminds me of what the SCOTUS has done to the right of a jury. It is almost impossible to explain to someone in under an hour the jurisprudence on the right to a jury. I think the founders of this country would agree that interpretations that are so convoluted as to give the judge complete discretion are not constitutional. They, in effect, become no law. The judge is then enforcing a law of you are a bad guy —or I think you are.

  100. What a nightmare you are. The abstract idea behind—just the phrase makes me want to scream.

    So, I suppose that patent applications should include a section on “The Abstract Idea,” and “Other Ways To Accomplish the Useful Part of the Invention.”

    J. Lourie whatever you have done with your life before this you are now a dirt bag for life that burnt down our system. Your heritage is that you are a dirt bag that pushed your own agenda over applying the law.

  101. You are right that it is the toxic mix of left and right that is killing the patent system. And, then the obtuse and ignorant SCOTUS and their 101 jurisdiction that has reached epic paralyzing heights. It is funny, though, the way they think if they rule 9-0 and make it simple that they are helping to clear things up. It just shows how ignorant and arrogant they are.

    Here SCOTUS — message to you scientific and patent illiterate and probably proud of it — the problem is that the 1952 Patent Act was written to make it easy to examine patent applications. That was a huge goal. You have brought your pre-1952 thinking and loaded up 101 with all of it, which frankly if you wanted to load up a section of the patent act you could not have picked a worse section. You should have attached your rot to 112.

    The solution SCOTUS is for you to read the 1952 Patent Act. Read J. Rich’s statements. And, try to understand that innovation is now 100’s of times bigger than it was in 1800. And, try to remember that it is a grant only for 20 years. After that all those many millions into finding the genes (some of which are going to be very hard and have multiple sites) is dedicated to the public.

    Just incredible in today’s age where information is so easily available that the “Nine” would be so willfully ignorant and arrogant.

  102. Oh look, I can talk smack too oooo aren’t we big boys?

    LOL – the difference 6, is not mere ‘talking’ – it is when the smack fits and when others (like you and Malcolm) talk it even when it does not fit.

    Why not bother to understand the procedural posture of the case, 6?

  103. That’s where he bonks up his analysis. What he has identified there is a mere soundbyte of the much larger abstract idea at issue in the case.

    LOL>

    Come now 6, you say that you have analyzed the matter. What is the abstract idea at issue.

    Let’s see if you understand which way is up (and if you understand that up the ladder of abstraction means that you have less details, less steps, ‘less claim elements’).

    I am sure that you are trying to climb down the ladder of abstraction – not up.

    As I posted, to some, all rungs of all ladders are too far up. To some, everything is an abstraction and thus there are a gazillion abstractions (and thus patent law is eviscerated).

    Even this comment is ‘too abstract’ for that person to even get the hint as to why he is full of CRP.

  104. They just want to keep their fingers in the nose of wax.

    They developed this wax addiction when Congress first punted on defining invention way back in 1783 (giving the courts the common law power of defining ‘invention’).

    Of course, the addiction was too deep to let the 1952 act get in the way.

    After 1952, the Court could have taken the time and realized where their precedent (if any) survived that clawback of power to Congress, but instead, they got lazy and just threw it all into the ‘implicit’ words of 101.

    And then you have Prometheus which came out after certain individuals started to raise doubts about the legitimacy of the Court’s “interpretation” idem writing law. The Court again got lazy – and this time defensive – and stridently stated that THEIR implicit writing would not be allowed to be made into dead letters.

    In case you missed this, the archives detail Malcolm’s mistaken view on this matter and my correction of him. Come to think of it, Malcolm did not have the nuts to admit that he was wrong on that point either. He’s a gutless (nutless) wonder.

    And you are entirely correct NWPA – the entire problem with 101 is directly traceable to the Supreme Court. They have quite screwed the pooch and refuse to clean up their mess.

    Even the special court, created by Congress to bring and maintain clarity in patent law has thrown up their hands in disgust and said “we cannot fix your mess, Supremes.” Go ask Alice.

    Perhaps if some academic would document this development the Court may be forced to deal with their overreach… (Will their agenda allow room for this ‘minor’ thing to be put on the calendar?)

  105. “analyze… and tell me”

    LOL – good luck. Malcolm will not likely be giving any answers again for awhile, having burned his hands severely by attempting to square Prometheus with the precedent case most on point.

  106. I analyzed the case myself ar se, I have a very good idea about just what I am speaking.

    LOL – what is the ‘abstract idea’ then 6.

    How high on the ladder were you able to climb?

  107. conclude it is not necessary and is indeed not good practice

    LOL – you are wrong – but only in ASSuming that someone (gee I wonder who you had in mind) would tell you that you were wrong (to the main gist of what you wrote).

    Everything else besides the dip into the Leopold pool of blood that you said was correct.

    Hint: If you feel the urge to type ‘whatever’ – think about why you feel that urge.

  108. Might we get back to the book?

    I see there is a chapter about filing foreign. Mr Sheldon, does your book point out the need to take account of ROW drafting imperatives, even before filing your Paris Convention priority date defining patent application. Does it identify any contradictions between US drafting and that for the ROW?

    You see, when drafting, I think one has to choose, between what is optimal for the USA and what is optimal for the ROW.

    I think that is because for ROW you need, for every dependent claim, a story in your specification of precisely what enhancement of which technical effect flows from the more specific technical feature combination of each such claim. This is something I do not see in cases drafted in the USA. I therefore conclude it is not necessary and is indeed not good practice, within the US jurisdiction.

    Whatever. I’m sure I can rely on at least one reader here, to tell me I’m wrong.

  109. The odd thing about all the 101 from the SCOTUS is that it doesn’t conform to the 1952 Patent Act.

    There should be eligibility since in reality the sequence does cover part of the DNA but includes other molecules. The SCOTUS is using these giant guns to say anything with one of those isn’t eligible, which is what I predicted since that is the same reasoning they have been using.

    And then the problem comes in because the SCOTUS says, “well sometimes it could be (Diehr),” but then this sometimes analysis becomes so convoluted as to swallow the entire Patent Act, and the “sometimes” becomes a harbor for the amorals to try and remove huge swaths of patentable subject matter.

    The SCOTUS is so disrespectful of the 1952 Patent Act, and to patent law in general. Anyone that has practiced patent law can see immediately that creating a complicated test upfront at 101 would freeze the system. And, indeed a strong argument can be made that the SCOTUS mucking with 101 has caused much of the problem at the USPTO.

    What the SCOTUS has done is frozen the PTO in how they can characterize information processing. Had the SCOTUS kept its nose out of this in Benson, Prometheus, etc., then the examination of these patent applications would be very different now.

    And, most of all of these problems are from the SCOTUS (who know nothing about science and thus are not qualified to be on the highest court). I guess it is just incredible to me that in the 21st century that anyone would think they are qualified to sit on the highest court of the land of innovation when they know NOTHING about science.

  110. You can sit and smear me all you like ta rd breath. Oh look, I can talk smack too oooo aren’t we big boys?

    Why not bother yourself to take a minute to look at the decision, and see if you agree with the nonsensical “reasoning” having to do with the court refusing outright to review the issue of law before them truly de novo.

  111. He said to the man that successfully predicted every last 101 case’s outcome in the last 7 years from the USSC. Including all the ones he himself boinked up.

    Keep it up EG. Keep up your fcking up. It’s just about all you’re good for in this arena. Besides screaming the sky is falling.

  112. Asking more question?

    Well Malcolm, 101 Integration Expert asked you to apply the Prometheus-generated Office protocol to the claims.

    Had you NOT been chicken sht, you would have taken up 101 Integration Expert on his challenge to you, and perhaps you would have figured it out for yourself.

    When do the bandages come off of your burnt fingers?

  113. Remember the Diehrbots

    I remember certain people saying that business methods were going to be outlawed outright and the Diehrbots crushed with Bilski

    I remember a certain poster disappearing for months.

    I remember a certain poster gloriously self-defeating and being the first to post the link to the Office interpretation of Prometheus – funny how that link talked about integration and not a certain pet theory.

    I remember a certain poster gloriously tossing his pet theory into a bonfire of his own making when after many many many months that poster finally took a first substantive attempt at squaring the Prometheus case with the precedent most on point and unchanged.

    Why yes, I certainly remember these key events.

    And now, Malcolm-claim-victory-no-matter-what, we toast marshmallows in the flames of your self-defeat.

    mmmmmm, toasty!

  114. foamin’ crazy?

    That’s the best legal argument you are going to make? Are you not going to talk at all about the instant decision?

    LOL.

    My, how very vacuous of you Malcolm.

  115. “You are not supposed to analyze abstract ideas. You analyze the claims as a whole.”

    The simpletons never let up. Remember the Diehrbots when they just knew that Prometheus claims were eligible because you couldn’t look at the claim elements and compare them to the prior art or identify if one of the elements recited ineligible subject matter? I certainly do. It went on for years.

    And then when the Supreme Court took a giant flaming cr-p on their mythology, they just pretended it never happened. Just like Rader wants to pretend it never happened.

    I have some bad news for you, my te-b-gging friends: it happened. Get over it.

  116. DEAD ON for what the science and technology is.

    Where, pray tell, is the “science and technology” in Ultramercial’s j–ky claim?

  117. There’s nothing “wanky” about Rader’s opinion in Ultramercial.

    You don’t think so? That’s nice.

    Like NWPA and anon have suggested

    [eyeroll]

    This from the guy who still hasn’t gotten over Prometheus and whose initial take on Myriad was that you could get around the eligibility issue by reciting “chemical structures”.

    Here’s a better idea: the Atticus Finch Club of Sincere Patent T–baggery should start its own blog. Apparently the echo isn’t loud enough in Gene Quinn’s cave anymore.

  118. 6: “Suffice to say that if no judicially excepted subject matter is being preempt, then you’re golden.”

    101 Integration Expert: Sorry 6 but that does not address anon’s point of you knowing when to stop because as anon says, “ALL patents can be divided into an ‘abstraction’ and extra-solution ‘steps.” 6, under your thinking you can reduce every process to an abstract intellectual concept and then say the claims ( steps) preempt that concept. So the question remains. When do you know to stop? If you can’t provide an answer with a responsible limit then that is proof positive you should NOT be allowed to have such power, as it surely swallows up the statute and eviscerates all patent law. Fortunately the Supreme Court has given you a limit. It’s called “integration”. When the claims are “integrated”, thats when you stop! Integration is the firewall for unlimited trips up the ladder of abstraction to the point of dissection.

  119. 6,

    As I said up thread, you don’t know “squat” about patent law. You’re not a lawyer, you obviously don’t think like a lawyer, and it shows in your ignorance of basic legal principles. Again, take your ignorant “bat and ball” and go elsewhere.

  120. 6,

    As I’ve told you before, and like “Dirty Harry” would tell you, “a man’s got to know his limitations.” And I agree with NWPA, you don’t know “squat” about patent law, how the courts work, or Section 101. Go take your “bat and ball” and go elsewhere.

  121. That’ll be judged on a case by case basis brosensky. Suffice to say that if no judicially excepted subject matter is being preempt, then you’re golden.

  122. “The court should not be start with trying to apply a judicial exception which should be as narrow as possible. ”

    If 101 is on appeal then it da m well better be if it wants to get the inquiry correct.

    ” You know, no sane person could ever even put forth this nonsense of looking for an abstract idea.”

    Except those 9 sane people overseeing your judiciary.

  123. The court should not be start with trying to apply a judicial exception which should be as narrow as possible. You know, no sane person could ever even put forth this nonsense of looking for an abstract idea.

    How about we use 112. This is the most psychotic nonsense I’ve ever heard. It would only come from people that don’t understand science.

  124. “willful ignorance. ”

    Talk about willful ignorance! The court here doesn’t even want to try to find out what abstract idea might be at issue in the case. They rule out one abstract idea from being preempt, but then leave untouched all the gazillions more that may well be at issue. Willful. Ignorance. Which coincidentally may well be one of the biggest reasons why they keep getting their 101 determinations vacated. Because if this is really their “process” then it is no wonder they’re all the time messing up.

  125. “It’s called walking up and down the ladder of abstraction.”

    Yeah, and they walked too far up it. Claimed it, and are in a long drawn out process of getting busted for it since the CAFC is dead set on not doing their job.

  126. “If this opinion stands (i.e., hopefully isn’t overturned by SCOTUS), there will be “weeping and gnashing of teeth” by the “software can’t be patented” naysayers.”

    Why do you think that? The challenger messed up his argument, no reason to gnash any teeth because of their failure. Other people’s lawlyers who aren’t t ards will not fail in that manner.

  127. “You are wrong. ”

    Ok, well I tell you what, as soon as Rader acknowledges his DUTY to go ahuntin’ for the abstract idea and not just take both of the party’s word for it when it comes to finding it, then I would bow to the superior skills of abstract idea finding by Rader. When however, he simply throws his hands up and says he’s not even going to bother himself to try to find it I find his disrespect for the lawl astounding. De novo. Review court. Just resolve the matter of law properly.

    “You are not supposed to analyze abstract ideas.”

    Absolutely preposterous. I suppose the fact that the USSC does it in every single case has escaped your notice?

    ” You are not supposed to analyze abstract ideas. You analyze the claims as a whole.”

    You analyze whether the abstract idea is preempt in view of the claim as a whole brosef. And that is simply a matter of procedure handed to us by the USSC in decision after decision after decision.

    “The CLS plurality is in violation of Supreme Court precedent. The Ultramercial majority is in accordance with the Court’s precedent in Diehr and as interpreted in Prometheus.”

    Alright if you’re going to just spout nonsense I’m through discussing the case with you.

  128. “6, you have absolutely no idea what you are talking about.”

    I analyzed the case myself ar se, I have a very good idea about just what I am speaking.

    “Rader’s opinion may fall because the fed. cir. is now stacked with judges that don’t know science or patent law, but it is DEAD ON for what the science and technology is. DEAD ON boy. DEAD ON boy.”

    Nobody cares NWPA. This is what you don’t seem to be getting. His opinion fails as a simple matter of messing up the law. Your assertions that others on the courts don’t know the lawl or scientry mean squat bro. The USSC will go ahuntin’ and they will find the abstract idea at issue, as was proper for the CAFC to do.

    “Frankly, reading Rader’s opinion sickens me that we now have members of the Fed. Cir. who didn’t care about science or the patent law more than tangentially before their appointment. ”

    What, do you think Lourie should just resign instead of trying to apply the USSC’s analysis?

  129. Malcolm,

    There’s nothing “wanky” about Rader’s opinion in Ultramercial. Like NWPA and anon have suggested, you should take your “ball and bat” and go play elsewhere.

  130. 101 IE,

    I’ve scanned through this Ultramercial remand opinion (enclosed) and it is HUGE for the computer software world. Chief Judge Rader was also true to his word, he has thrown down the gauntlet before SCOTUS. This opinion written by him is all we could hope for in rendering “order” out of “chaos” in patenting software and other machine/computer-implemented inventions.

    If this opinion stands (i.e., hopefully isn’t overturned by SCOTUS), there will be “weeping and gnashing of teeth” by the “software can’t be patented” naysayers. And we now have some true “guideposts” missing from Bilski for how to get to the patent-eligibility zone with software and other computer-implemented inventions. Hallelujah!

  131. What is ‘obvious’ here is what should be ‘obvious’ to anyone with a technical education.

    It’s called walking up and down the ladder of abstraction.

    The problem the court is facing is that their method of identifying abstraction (hunting for a gist) does in fact eviscerate ALL patents, because ALL patents can be divided into an ‘abstraction’ and extra-solution ‘steps.’

    ALL.

    That is what ‘invention’ is. In order to invent anything, you have to apply your mind for a purpose and (whether you recognize this or not), abstract up at least one rung. Good minds can abstract several rungs at a time. Great minds can abstract several rungs on several ladders at a time. The modern day ‘team’ approach is styled after the several ladders paradigm.

    Anyone with any understanding of how innovation works can see this.

    For someone like 6, who spends his mental time at the bottom floor, looking up at that first rung of the ladder of abstraction is completely ‘abstract.’ He just has no actual experience standing on the first rung, and cannot tell the difference between the first rung and the second rung.

  132. What is this “significantly more” subjective language supposed to mean?

    Anybody’s guess

    Anybody’s guess?

    I would have through that the person who thought he Prometheus case was ‘well reasoned’ would have had an easier time explaining this, especially since that same person is a master of English as a first language.

    Oh wait, that person just took a first substantive shot at actually squaring Prometheus and ended up throwing his cute little pet theory into the bonfire.

    mmmmm, toasty.

  133. Try: erudite exposition based on the real science and technology. You dirt bag. (Still to see the SCOTUS come and take your playground away based on the same willful ignorance you are now displaying is poetic justice, but unfortunately a tragedy for us all.)

    (I wouldn’t get so mad at these pond scum except for the fact I know it is willful ignorance for a bad purpose.)

  134. Or the fact that they fuel ignorant mice like 6. Or the fact that they have nourished a culture of willful ignorance.

  135. 6: “They aren’t, the judges are just analyzing the wrong abstract idea in Ultra.”

    You are wrong. You are not supposed to analyze abstract ideas. You analyze the claims as a whole. If there is a concept in the claims at issue you turn to the inventor’s through their own words in the spec, claims or prosecution history to identify the concept. You, 6, do not make up your own stuff. The difference between the two cases is one, [Ultramercial] is based on “integration analysis” and the other [ Alice Corp] is based on “dissection analysis”. The CLS plurality is in violation of Supreme Court precedent. The Ultramercial majority is in accordance with the Court’s precedent in Diehr and as interpreted in Prometheus.

  136. And for all you little brains that think this is offensive try to use what few neurons you have to really think about what some of these “judges” and academics have been up to. Think of the ones that have lined their pockets (or their academic careers) at the expense of our innovation.

    There are now many that walk around laden with the rewards of their intellectual dishonesty and lack of morals.

  137. Of course on you, I can only hope that you get testicular cancer and assert that your calculator should have known with its BRAIN.

  138. MM: according to you and Lourie there is no difference between his programmable calculator and the computer that could have saved his wife’s life.

  139. 6, you have absolutely no idea what you are talking about. Rader’s opinion may fall because the fed. cir. is now stacked with judges that don’t know science or patent law, but it is DEAD ON for what the science and technology is. DEAD ON boy. DEAD ON boy.

    Frankly, reading Rader’s opinion sickens me that we now have members of the Fed. Cir. who didn’t care about science or the patent law more than tangentially before their appointment.

    What a disgusting group of people the SCOTUS is and what a disgusting group of people (in general there are some keepers) Obama has been appointing.

    And, 6, boy, boy, boy, learn the science you ignorant mouse.

  140. “”The abstract idea at the heart of
    the ’545 patent, which the district court properly identified, is “us[ing] advertising as an exchange or currency.”

    That’s what the inventor and the court agreed on. Which is the correct way to go. You as an examiner have no authority or business making up abstract ideas for inventions then distilling the invention down to “your” abstract idea for the so purpose of making it eligible subject matter.

  141. I didn’t even notice Lourie’s concurrence.

    “The abstract idea at the heart of
    the ’545 patent, which the district court properly identified, is “us[ing] advertising as an exchange or currency.” ”

    That’s where he bonks up his analysis. What he has identified there is a mere soundbyte of the much larger abstract idea at issue in the case.

  142. “Honestly, how are Alice’s claims and Ultramecial’s claims any different when it comes to patent eligibility?”

    They aren’t, the judges are just analyzing the wrong abstract idea in Ultra.

  143. What is this “significantly more” subjective language supposed to mean?

    Anybody’s guess. Rader’s own test is just as wanky, resting on considerations such as whether the claim is “tied in a specific way” to the computer such that the computer plays a “meaningful role”.

    As usual, no examples are provided except to repeat the mishmash of facts in previous cases that the Federal Circuit itself interprets in ten different ways. Laziness? Incompetence? Willful vagueness?

  144. You miss the point.

    I used a legal decision to make a point, drawing some small criticism from you.

    You are not even there – using a personal matter, unaffiliated with any law or law decision, and exhibiting some pretty stiff insensitivity.

    Step back and think about it.

  145. Yeah, this might go to the SCOTUS. I think Rader is already teeing up the arguments. I thought his arguments were quite excellent.

  146. “smacks of insensitivity and person (not legal history)”

    J. Lourie is acting outside the law for his own personal agenda.

  147. …and you thought my focusing on the hubris of the Supreme Court should have been more restrained…?

    My post was in no way directed to blacks, and only could be twisted by someone WANTING to twist things out of control (and tellingly so), and was directly on point to the power-hungry Court, while this, merely smacks of insensitivity and personal (not legal history).

    Please find a better way.

  148. For those that find it offensive, consider that under Lourie’s law of Alice there would be no patent protection for any software/hardware.

  149. His calculator failed to detect his wife’s breast cancer. He is a changed man after arguing there was no difference between his calculator and the computer at the hospital.

  150. Lourie is concurrence writes:

    “unlike the method claims in CLS Bank, in my view, the added limitations in these claims represent [significantly more] than the underlying abstract idea of using advertis- ing as an exchange or currency and, as a consequence, do not preempt the use of that idea in all fields.” ( Emphasis Added)

    What is this “significantly more” subjective language supposed to mean?

    Honestly, how are Alice’s claims and Ultramecial’s claims any different when it comes to patent eligibility?

    Why was Rader wrong in Alice and now suddenly right in Ultramercial?

    I think the honorable and esteemed Judge Lourie owes us more of an explanation, especially in light of his opinion in CLS Bank v Alice.

  151. If you don’t know what you’re doing there, you can always just refer to someone who does. I’ve tried to clean these issues up for several clients, but really, a lot of times there’s simply nothing that I can do for them. Do your clients a favor and send them to someone who knows this stuff if you’re trying to read a book on it. I don’t take chemical cases for a reason.

  152. from the author – yes. That will again be updated in view of recent Supreme Court decisions. I believe PLI will provide a full refund if you do not like the book. (Best confirm that with them)

  153. Does he give actual example language of what to put in computer/software/business method applications? How good is this section? Is there an in-depth description of this?

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