A few recent Section 101 cases at the PTAB

By Dennis Crouch

Patenting Software: Ex Parte Betts [Computer Associates], 2013 WL 3327142, Appeal 2010-004256, Application 11/132,649 (PTAB 2013) (“[W]e conclude claims 14-26 encompass software without physical embodiment, i.e., software per se, which is an abstract idea and not a “process, machine, manufacture, or composition of matter,” as required by § 101.”)

Patenting Software: Ex Parte Krause [HEWLETT-PACKARD], 2013 WL 3246398, Appeal 2010-012129, Application 10/442,401 (PTAB 2013) (Claims directed to an “end station” within a network having an “aggressive timer.” “Appellant contends that the Examiner erred in rejecting [the] claims … under 35 U.S.C §101 because the claims recite an “end station,” which is defined as hardware. Appellant’s argument does not cite evidence to rebut the Examiner’s interpretation that the claim encompasses either hardware or software. Accordingly, we decline to reverse the rejection.”)

Patenting Software: Ex Parte Barsness [IBM], 2013 WL 3362954, Appeal 2010-011009, Application 11/316,285 (PTAB 2013) (Claim directed to “computer-executable instructions tangibly recorded on a computer-readable media” construed to include “non-statutory, transitory embodiments.” “[W]e find the Specification states the invention is capable of being distributed in the form of a wireless signal when exchanged from one signal-bearing medium to another. This falls within a propagating electromagnetic signal per se and thus, is not directed to one of the statutory categories.”)

Patenting Software: Ex Parte Svendsen [Concert Tech], 2013 WL 3363110, Appeal 2011-001873, Application 11/837,876 (PTAB 2013) (Claimed media “control system” could be implemented as software. “As such, we are not persuaded by Appellants’ argument that the mere recitation of a “control system” (even if the Specification describes it as being associated with a memory) is sufficient to make the claims patent-eligible under 35 U.S.C. § 101 . . . as it does not play a significant part in the performance of the claimed steps.” In short, the broadest reasonable interpretation of the claim language leads us to construe the “control system” as being directed to a computer program per se, which, as drafted, renders the claimed subject matter not patentable under 35 U.S.C. § 101. See Gottschalk v. Benson, 409 U.S. 63, 72 (1972).”

Patenting Method that Could be Performed by a Human: Ex Parte Xu [HEWLETT-PACKARD], 213 WL 3363011, Appeal 2010-009107, Application 10/767,075 (PTAB 2013) (“[C]laim 1 as a whole is directed to a sequence of steps that can be performed by a person. Accordingly, claim 1 is drawn to patent-ineligible subject matter and invalid under § 101.”)

Patenting Device Attached to a Human is OK: Ex Parte Robert S. Bray, 2013 WL 3293616, Appeal 2011-013427, Application 11/686,054 (PTAB 2013) (“The claims recite a device positioned between two vertebrae not, for example, a human comprising a positioned device. The claims relate only to the correct placement of the device in the human patient, and as a whole, do not encompass a human organism. There is nothing in the statute, and we are unaware of any case, that categorically excludes such devices.”)

386 thoughts on “A few recent Section 101 cases at the PTAB

  1. Sorry Anonymous,

    But NO.

    I choose the word ANTHROPOMOPROHICATION because that was the auto fill on my smart phone the first time I used it – and I liked it.

    ANd the Caps stays – because no one has been able to address the LEGAL ramification of the word – including you. For that, you need to understand exactly what the mental steps doctrine originated for – and it was not for machines, which are EXPRESSLY a patent eligible category.

    So, my advice to you is to learn first a bit more of the history involved in the discussion and that way you can appreciate better the better position that I make.

    Thanks.

  2. >
    > MM: “Exactly what “proposition” are you referring to?”
    >
    > Your theory that all claims in the form [oldstep]+[newthought] are
    > ineligible under 101. You have been making this  proposition for years yet  you have never reconciled it with controlling case law for what “is” eligible subject matter, Diamond v Diehr which explicitly held:
    >
    > “Respondents’ claims must be considered as a whole, it being
    > inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. The questions of whether a particular invention meets the “novelty” requirements of 35 U.S.C. § 102 or the “nonobviousness” requirements
    > of § 103 do not affect the determination of whether the invention falls into a category of subject matter that is eligible for patent protection under § 101.” Diamond v. Diehr – 450 U.S. 175 (1981)

    > In addition, Prometheus, the case which you claim gives legal
    > authority to your proposition explicitly states Diehr is the case most on point for what “is” eligible subject matter. And further explains Diehr as standing for “integration”, not dissecting and ignoring any steps or elements, as your propositions purports to do. See: “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)
    >
    > Therefore, according to the Supreme Court of the United States, a claim that “integrates” old step(s) and new thought(s) may very well be patent eligible. In fact Diehr’s claim 11 is a prime example of a claim that integrates old steps and new thoughts throughout the process. And as Prometheus explained to you 9-0, it was because of this way [ integration of old step(s) and new thought ( s) ].. that the claim was patent eligible. Indeed as the Court says above, these
    > (integrated) “steps transformed the process into an inventive
    > application of the formula.” ibid
    >
    > Any Questions?

  3. Anon,

    You keep throwing around this “word.”

    First, just Google “can computers think.” I don’t think the answer is nearly as simply as you make it out to be.

    Second, try Googling “is the brain a computer.” For example, see link to psychologytoday.com. So maybe humans can’t “think” either. At least, this thread appears to be proof of that.

    Of course, both of these topics are highly debatable and in fact are highly debated.

    Finally, “anthropomorphication” is not actually a word. I believe you mean “anthropomorphization.” Feel free to use the real word. However, when you type it, please turn off your caps lock first.

    Thanks.

  4. There you go again saccusing others – Hey – I don’t have a single bonfire going, while you have at least three.

    LOLL – I LOVE when you attempt to delve into substantive discussions.

  5. Pretty sure that didn’t happen, Tr0llboy

    On your world, Malcolm, nothing happens.

    But this world, well, your drubbing is legendary – so much so that you have had both Leopold and 6 implore me to stop drubbing you.

    Of course, you are just a tad bit too thick to get that.

    (hint: you spend 21,000 mewling vacuous QQ and yet, three simple little words would do: anon was right)

    LOL – you just don’t have the nuts.

  6. Nothing but QQ from you 6.

    Still not what you said that you would deliver.

    Funny, that you spend SO much effort NOT providing what you said that you would provide.

    And Hey – if you were really interested in figuring out how to stop my so called “tr011ing” I long ago gave you that answer:

      Answer the questions I ask and address the points I raise in an intellectually honest manner and I won’t have to chase you down and rub your little puppy dog noses in your piles of CRP.

    It really is THAT easy (of course, your pet theories and agendas would go bye-bye). And of course, NO – you have not answered them yet (ad zilch).

  7. LOL – you Malcolm are the one with the ‘issue’ about patent attorneys doing their job and obtaining patents for their clients.

    As for aliens speaking and shiny aluminum helmets, well, that too is your area of expertise.

  8. LOL – there are other named that live in infamy Ned.

    Yours amongst them.

    Happens to do with poor quality blogging, obvious shilling for third parties, and a refusal to address points raised.

    We both know why you refuse to address certain points, don’t we?

  9. One way to appreciate the silliness is to consider an old machine that is programmable to display information. I “invent” a “new” machine that differs from the old machine in one respect: the information that is displayed by my machine is a bit of new and non-obvious and extremely useful information, never disclosed prior to the filing of my patent claim.

    If we accept the HULK SAY ALL MACHINE ARGUABLE “argument”, then we simply move to 103. There’s “no eligibility issue here.” So what happens under 103? This is where Rader and Co. start tripping over their tongues. Now it’s okay to dissect the claim and ignore the limitation regarding what is displayed? Even though 103 says that we are to consider the “claim as a whole”? And in spite of the Supreme Court’s decision in Mayo and Prometheus?

    Or do we just rubber stamp the claim “allowed” and celebrate the creation of another patent troll?

    Rader doesn’t want to talk about this. Nor does Gene Quinn. Nor do his friends who come here and insult everybody who disagrees. Why is that?

  10. link to writtendescription.blogspot.com

    Judge Linn pointed out two consistencies in the Supreme Court’s opinions on patent law. First, the Supreme Court consistently upholds Supreme Court precedent. Additionally, they consistently strike down the Federal Circuit’s bright-line and patent-specific rules in favor of flexible principles or guidelines. Judge Linn suggested this second point was the fundamental difference between the two courts.

    Gee, I wonder what will happen to Rader’s HULK SAY ALL MACHINE ELIGIBLE test?

  11. Query, the/a basic premise of Ultramercial is that a programmed computer is eligible subject matter because a computer is a machine. That same thinking underlay Rich’s positions through time. See, e.g., In re Benson.

    The premise is obviously false.

    From the case: “Direct attempts to patent programs have been rejected [and] indirect attempts to obtain patents and avoid the rejection … have confused the issue further and should not be permitted.”

    Remind me: was this Supreme Court case ever overturned? Also, does anyone think it remotely likely that the Supreme Court is going to reverse itself on a 101 issue based on some “insight” of Judge Rader? There’s nothing in Ultramercial that’s any more compelling than the HULK SAY ALL MACHINE ELIGIBLE argument we’ve been hearing since the CAFC first pulled that proposition out of its butt.

  12. Query, the/a basic premise of Ultramercial is that a programmed computer is eligible subject matter because a computer is a machine.  That same thinking underlay Rich’s positions through time.  See, e.g., In re Benson. 
     
    The premise is obviously false.

     
     

  13. “Ultramercial is not good law in that it trashes the Supreme Court cases that control.”

    Sounds like a good premise for a law article, Ned. (Though I disagree with the premise.)

  14. your pet theory was not ablaze in the bonfire of your own making.

    This all stems from that time you got busted trying to set fire to your nightschool, doesn’t it?

  15. your pet theories are ablaze

    Maybe you should watch fewer Emergency! reruns Tr0llboy. Ask your mom to upgrade the cable subscription. I know she’s made at you for violating parole, but it’s worth a shot.

  16. 103 says nothing about eligible or ineligible subject matter, as such is not the concern of 103.

    Fixed.

  17. Judge Rich never provided any explanation of how to handle a claim that nominally is directed to patentable subject matter, i.e. a player piano, a machine, but whose novelty is not in the machine, etc., but in other subject matter such as the music being played by the player piano, or the music encoded on the computer readable media, the CD-ROM.

    In Prometheus, the Supreme Court rejected the notion that section 102/103 provided adequate filters for excluding the patenting of ineligible subject matter by adding in to the claim such things as a machine, an article manufactured, or composition of matter where the real novelty in the real invention being claimed is ineligible subject matter.

    Right. For some strange reason, Judge Rich and his acolytes (e.g., Rader) seem very disturbed about analyzing claim elements in a 101 analysis but they are very comfortable about doing so in 103. That seems rather odd given that the 103 expressly talks about looking at “claims as a whole”, while 101 does not. It’s even more odd when you consider that 103 says nothing about eligible or ineligible subject matter, as such is not the concern of 101.

    Judge Rich apparently did not think through his proposition or perhaps he was simply hoping to perform a kindness on behalf of his patent loving friends. In any event, he was dead wrong. The relationship of the claimed invention to the prior art has to be evaluated in order to understand how the claim affects people who are practicing the prior art. Specifically, if people who are lawfully practicing the prior art are turned into infringers by performing additional steps that would by themselves be ineligible for patenting, then a claim that recites those steps (i.e., the steps in the prior art and new ineligible steps) is itself ineligible.

    This is easy stuff. Some of the whiners surely “get it.” Those are the worst ones.

  18. Ultramercial is not good law in that it trashes the Supreme Court cases that control. Judge Rich tried to do this back in State Street Bank. Judge Rich’s name now lives in infamy the because of that case.

  19. Query, I think not. You may want to try reading Judge Rich’s opinion in In re Benson, and then compare that opinion to the Supreme Court case.

  20. “seriously? You know when you use that term you say a lot more about YOUR lack of intelligence than anything else.”

    He said between breaths in and out of his mouth.

  21. EG, it what class is software best classified in your view:

    a machine;
    an article manufacture;
    a composition of matter?

    Then tell me, please, what size box holds a pound of software?

  22. “Preemption is a silly and absurd aspect of a patent eligibility test.”

    Fine, I have no problem with you characterizing it that way. I rather think it isn’t. But either way, so frakin what? Nobody can do anything about it.

  23. Oh really? The case was “set up” for that? By whom? The plaintiff? The defendant? And why should I care that whatever person in question set them up? Why should you care?

    “which goes to point out that your ‘theory’ is nothing but crock.”

    What “goes to” “point out” that? The setting up by some unknown person? It sounds like you’re just using empty phrases you’ve heard around the interwebs.

    There’s nothing that can show that my “theory” is “nothing but a crock”, because it is, no matter whether it is a “crock” a judicially implemented “crock” which you, and the rest of us are obliged to obey. My “pet theory” has been reaffirmed, time and time again by the USSC and is now being taught as cannon in the PTO. Though it is admittedly taught alongside some committee made “policy” about “factors” that I lol @.

    So even if I agree with you that it be a “crock”, it is a judicially implemented “crock” that we are obliged to obey. And there is nothing within your power that can be done about that.

    Brother, you’re a tar d, and there’s nothing that can be done to help you on that front, but you could at least try to phrase your interest in the topic about which you constantly troll in phrases that make some sense to sane people. You don’t have to babble about ladders and what all this nonsense or that all other nonsense.

    If all you want me to do is agree with you that it is a judicially made crock that you’re obliged to obey, then you could have just said so ages ago. Because it is not a totally unfair characterization for a super strict textualist to characterize it as such. I’m quite happy to say that, you, as a strict textualist, are firmly entitled to call it a “crock”. Got that? Now maybe you can just stf u with the tro llin’?

    “You said that you had doen this at least twice 6 – and yet, you seem to be spending one H311 of a larger amount of energy AVOIDING the analysis.

    Brother, you don’t seem to understand, I’m less worried about Ultramercial, the latest flavor of the day in terms of patents claiming an abstraction, which I’ve already gone over on these boards ad infinitum, and I’m much more interested in figuring out how to get you to stop trol ling every other g d post in every thread about how MM, or me, or Ned, or whoever is “running away” or “not answering” or doesn’t understand the PMD, or doesn’t understand ladders, or or or or or. Where you always make it a point to couch whatever point you’re making in some sort of ta rdspeak. We all know your position, backwards and forwards, you have no need to remind us of it every hour on the hour every day on the morrow or even every week/month/year. Similarly, we all know your supposed “gotcha” questions, and how we’d answer them just fine, and usually have answered them ad infinitum already though you beg for the answer (or was it “inclusion in their narrativelol?”) for the umpteeth time.

  24. you are drubbed so viciously

    LOL. Pretty sure that didn’t happen, Tr0llboy.

    I guess it must seem pretty impressive that I survived the awesome “drubbing” you gave me in your imagination, given that you used all caps like ten times. Maybe you should go all out and use more bold and italics next time? And I’ll make it fair by typing with a blind fold on.

  25. EG, I cannot believe your post in light of all the Supreme Court cases that tell us that simply reciting machine, article manufacture, or composition as nominal subject matter to a claim to otherwise ineligible subject matter is not sufficient. You seem to think otherwise. I have no idea how you can think otherwise.

    If you think the board is out there, may I caution you EG that you might reconsider whether you really understand the law.

  26. bad joke ahead, you fall in the same trap as did Judge Rich had for so many years. That trap is this: if the claim recites a machine, a composition of matter, an article of manufacture, or process involving any of these, it passes 101. That was the entire basis of his opinion in the overruled In re Bensen.

    But Judge Rich never provided any explanation of how to handle a claim that nominally is directed to patentable subject matter, i.e. a player piano, a machine, but whose novelty is not in the machine, etc., but in other subject matter such as the music being played by the player piano, or the music encoded on the computer readable media, the CD-ROM.

    In Prometheus, the Supreme Court rejected the notion that section 102/103 provided adequate filters for excluding the patenting of ineligible subject matter by adding in to the claim such things as a machine, an article manufactured, or composition of matter where the real novelty in the real invention being claimed is ineligible subject matter.

    The lesson of all the Supreme Court cases on this topic tell us that mere recital of nominal components that may themselves be eligible is not sufficient. Prometheus is a prime example. There the process claimed included claim steps, albeit old, that clearly passed the MOT. But nevertheless the claim is held ineligible because the novel subject matter being claimed was not the old process but the new correlation, a correlation which was a law of nature and could not be claimed as such.

    The Supreme Court tells us that we cannot add to a claim primarily directed to ineligible subject matter nominal elements that otherwise might pass muster as eligible subject matter. Such formalism would make a mockery of the patent law.

  27. you need to be running to get some buckets of water for your flaming theory

    LOL. This obsession with fire and flames is about as weird as your old obsession with “arrows” and “horses.”

    Have you tried turning the air conditioning up in your room, Tr0llboy? I don’t think our mom will raise the rent if you just turn it up a couple notches.

  28. witness his ‘railing’ against patent attornies trying to obtain the most effective patents for their clients

    Looks like the aliens are speaking through Tr0llboy’s fillings again. I wonder if the same aliens told him about using mailroom staff to screen and discard registered letters sent to his attorney. Seems likely.

  29. a sort due to the cognitive dissonance required.

    Sorry 6 – your pal Malcolm has the market cornered on cognitive dissonance. Witness his ‘railing’ against patent attornies trying to obtain the most effective patents for their clients (somethign patent attorneys are ETHICALLY required to do).

    Malcolm’s sense of ethics is substantially screwed up.

  30. Malcolm, I don’t think the problem necessarily is “mental steps.” Take a mathematical algorithm. Without any limitations to its performance by machine, the mathematics of course can be entirely performed in the mind. But if the claim describes, for example that every step is performed by a machine, for example, by a programmed computer, then the claim itself does not involve any mental steps. And yet we learn from Benson that such a claim is not eligible under section 101.

    Rather the problem as expressed by the Supreme Court in Benson is that the claim, taken as a whole, does not do anything useful. Calculating a number from a number is entirely abstract, and it doesn’t make any difference whatsoever that the claim recites its calculation using a particular machine. A machine process is claimed, of course, but what the claim does when taken as a whole is not useful – at least it does not have a specific utility rather than a general utility. It simply calculates data from data.

    Now if the claim was somehow limited to an improvement in the computer architecture such that the computer as claimed would include the new mathematics as an instruction for example, then the claim would relate to a particular machine.

    If you’ve been following the debate between anon and myself, it has been precisely on this point, i.e., whether claims to programmed computers have to somehow be limited such that the programming becomes part of the machine in order to define a particular machine. The problem was I see it is that the apostles of patenting software do not want to have the software be physically part of the machine in order to define eligible subject matter.

  31. Les,

    6 has failed to provide what he said he was going to provide as to the abstract/preempt/ ladders of abstraction discussion.

    It is easy to see that the reason he has failed to do so is that he KNOWS that his pet theory is toast.

  32. drag all the rest of the mouth breathers

    mouth breathers? We have returned to the ‘liberal cartoons’

    LOL – seriously? You know when you use that term you say a lot more about YOUR lack of intelligence than anything else.

    And 6 – I noticed that you have not yet reported back fro myour friends at techdirt and what it takes to obtain copyright. (yeah – the production of an article in a fixed media)

    As they say, svcks to be you.

  33. Because this case was set up to discuss the ladders of asbtraction and your complete lack of understanding of the concept – which goes to point out that your ‘theory’ is nothing but crock.

    Do you even understand yet that you have not climbed even a single rung on the ladders of abstration that most expereienced engineers know very well?

    The fact that you are so out of your league and that your vaunted “theory” is complete rubbish awaits.

    You said that you had doen this at least twice 6 – and yet, you seem to be spending one H311 of a larger amount of energy AVOIDING the analysis.

  34. And what data is stored therein?

    This is all form over substance, and that’s why it falls apart.

  35. Still here, Eric. You’re the guy running.

    LOL – talk? you need to be running to get some buckets of water for your flaming theory Malcolm.

    As for ‘running’ I still don’t see the answers to the many questions I put forth on 101 topics, and even under the barrage of 21,000 mewling words of QQ on Myriad, Malcolm you STILL run away from the plain fact that I was right and that you were wrong.

    (hint: if you want to play the interenet toughguy, don’t be a pansy when you are drubbed so viciously by others) It just makes you look like a blowhard.

  36. If you’ve got something to say, then say it.

    LOL – it’s your turn. You are way behind on answers (especially answwers that do not torch your pet theories).

    Maybe this time you can bring popcorn for a change of pace.

  37. LOL Malcolm,

    It is more than apparent that it is you that desparately needs some help, given that your pet theories are ablaze, you have been busted YET AGAIN employing svckpuppets (which you went all ballistic iin youru QQ’s to Prof. Crouch), and that you have not been able to advance even a single correct item of law in… how long now?

    As they say: svcks to be you.

  38. And I’m not going to rehash it for you again

    LOL – I have already reposted it – and can do so again if you like Malcolm. The archive is quite clear that you not only toasted your pet theory, but that you also refused to even attempt to use that vaunted “English as a first language” skill to explain how your pet theory was not ablaze in the bonfire of your own making.

    (on the plus side, I still have a few marshmallows that I can roast for you).

    By the way, have you found the nuts yet to admit to the simple fact that I was right inthe Myriad decision and that you were wrong?

    Thought not.

  39. Anytime you want to have a grown-up discussion about the issue I raised, all you need to do is … grow the fk up.

    LOL, more of the Malcolm-accuse-others-of-that-which-he-is-does tactic.

    Malcolm, perhaps someone should tell you just how stale and ineffectual this tactic of yours is.

    Perhaps when the day comes when you can engage in a substantive point without toasting one of your pet theories you will attempt this “grow the fk up” thing.

    I won’t be holding my breadth, mind you.

  40. You have to wonder if all these ex parte appeal decisions and review decisions are going to clog the Fed. Cir. with appeals.

    I would think so.

  41. “Check out Nuijten for a good legal definition of manufacture. ”

    Thanks, but I’ll get my definitions from Merriam-Webster.

    Nuijten hasn’t produced anything worthwhile since Cat Scratch Fever.

  42. Preemption is a silly and absurd aspect of a patent eligibility test.

    All patent claims preempt something. That’s what they are supposed to do.

    The Wright Bros claim preempted the “abstract idea” of warping wings.

    As far as anyone knew, the first electric lamp claims preempted preempted the “abstract idea” of making light from electricity…

  43. The pay is okay, it’s not great. But yeah, when you can vomit out cr#p like this and suffer no consequences, it does look like an easy gig for a pretty decent amount of money.

  44. Well good for you EG, you, like probably nearly all patent attorneys with any experience, obtained some invalid claims! Yay! Or not.

    You can’t expect people who spend their whole days thinking about abstract nonsense for money to get it right all the time. Such thinking clearly would lead them into insanity of a sort due to the cognitive dissonance required.

  45. EG I know the difference better than you do

    Oh, I’m so sure of that, Gramps. After all, I only started programming computers when I was ten. Maybe you can tell everyone what the difference is, then? You asked the question, you now claim to know the answer. So what’s the difference, in your mind, between software and hardware?

    biotech boy

    Yes, we all know it’s standard practice for the Software Patent Lovers Club to pretend that their “enemies” are somehow computer illiterate. When the claims are routinely devoid of any technical elements other than the recitation of an old computer or super complicated stuff like “links” and “websites”, it’s a pretty weak rhetorical tool. But then again it’s a beloved argumentative “strategy” over at Big Gene’s place, where all you guys seem to love sitting around and listening to the echoes of your own voices.

    hardware, firmware, and software is functionally equivalent in the computer world

    Oh, looks like the goalpost keeps moving (surprise!). First there is no difference at all (or at least that was what was implied by your original question). Then they are “equivalent”. Now they are “functionally equivalent”? And that means what, Eric? Hardware and software can perform all the same functions? I think at the very least it would depend on which “hardware” we are referring to. Maybe you want to move the goalpost a little bit further and use a term like “computational hardware”? I’m not convinced that your statement is accurate even then. Does software wear out and fail at the same rate as hardware?

    It’s all so complicated, Eric! I mean, I’m just a biochemist Ph.D. who has worked with computers and world-famous computer theorists for his entire adult life. All this computer stuff is just super dooper hard for a chap like me. And then when you throw in stuff like “passwords” and “real estate availability” and “look and feel”, why, you have to be real genius like you or Gene Quinn to even begin to have a serious conversation about the “technology.”

  46. “Sounds like a manufacture to me…”

    Alright, well as soon as you can drag all the rest of the mouth breathers behind you along with your point of view in unison, perhaps I’ll revist the issue.

    Though I will note that “made” doesn’t really equal “written”. You’re just back-dooring in a more broad construction with the term made rather than the term manufacture. Check out Nuijten for a good legal definition of manufacture. “manufacture” (in its verb form) as “the production of articles for use from raw or prepared materials by giving to these materials new forms, qualities, properties, or combinations, whether by hand-labor or by machinery.” and “production of articles” doesn’t really mean “written” either.

    “Also, software can carry out a process… so, claims directed to the process are not directed to “software per se”, but recite processes which might be implemented using software.”

    You might persuade me to be amenable to a claim to a process. Though, at base it seems to me as if the manner in which the computer accomplishes all tasks is through computation, and adding on layers of abstraction about what is ultimately accomplished by that computation would not prevent any given claim from still preempting some computation, even if what specifically that specific computation was happened to be wholly unknown in a given instance. Which is why I’m rather wary of these process claims. At base you wish to stop people from doing some computations (without paying you anyway), even if you never stated as much in your claim.

  47. Why are you so keen on discussing my finding of an abstract idea in Ultramercial bro? I’ve supplied them in many other cases at the USSC and they all turned out just fine. What makes this one case of such interest to you that you must troll non-stop for my opinion?

  48. you’re completely out of your element here.

    LOL. Encyrption! Passwords! Challenges! It’s all so complicated and “technical”, Eric.

    stick to biotech

    As if Ph.D.s in biotech haven’t been using computers forever. Nice try, Eric.

    Speaking of Claim 1, do you even know what a “nonce” is?

    “In security engineering, a nonce is an arbitrary number used only once in a cryptographic communication.”

    Truly difficult stuff, Eric. Kinda like rocket science! How old were cryptographic nonces in 2000? That’s a history question. I guess we’ll need to find a history major to answer it.

    standard “gun and run”

    LOL. Still here, Eric. You’re the guy running. Are you ready to talk about why all [oldstep]+[newthought] claims are ineligible yet?

  49. 1man·u·fac·ture
    noun \ˌman-yə-ˈfak-chər, ˌma-nə-\
    Definition of MANUFACTURE
    1
    : something made from raw materials by hand or by machinery
    2
    a : the process of making wares by hand or by machinery especially when carried on systematically with division of labor
    b : a productive industry using mechanical power and machinery
    3
    : the act or process of producing something

    link to merriam-webster.com

    Software is written you say… so, it is made by hand or by machinery (like a compuuuuter)….on paper with ink or toner or in computer memory, with electrons…. so… with raw materials.

    Its even sometimes made systematically with division of labor.

    Sounds like a manufacture to me…

    Also, software can carry out a process… so, claims directed to the process are not directed to “software per se”, but recite processes which might be implemented using software.

  50. Malcolm,

    I know the difference better than you do, biotech boy. And anon is correct, hardware, firmware, and software is functionally equivalent in the computer world, just a matter of what “form” you’re talking about.

  51. Malcolm,

    More of your standard “gun and run” stuff. If I were you, I would stick to biotech, you’re completely out of your element here. Speaking of Claim 1, do you even know what a “nonce” is?

  52. Let the record show: Eric Guttag doesn’t know the difference between software and hardware. And he blames this on the fact that he was a “chemistry major.”

    Too funny.

  53. now square this with Nuitjen.

    Square “what exactly” with what part of Nuitjen, Tr0llboy?

    If you’ve got something to say, then say it. You seem to have great difficulty communicating, Tr0llboy. It’s that English problem again, isn’t it? I know it’s difficult and embarassing for you, especially when typing in all caps with bold letters worked so well in kindergarten. Maybe call your mommy and ask her to help you type out what you intended to say.

  54. you are off the deep end

    Tr0llboy has trouble explaining himself, so he throws out an insult. Good job, Tr0llboy! Gene has a cookie for you.

  55. EG how is software different from hardware?

    Tr0llboy: software is equivalent to hardware

    LOL. Do you guys rehearse this stuff together after school? Who brings the snacks?

  56. Tr0llboy: you have made no point here.

    Looks like Tr0llboy is in full drive-by D umpty mode now. Pretty funny.

    That’s right, Tr0llboy. None of us have any “points”. You’re the only one with anything of “substance” to say.

    [pats Tr0llboy on head]

    Why not run along to Gene’s place now and sit on his lap? You look really cute there.

  57. Internet tough guy routine

    LOL. So says Mr. Sensitive, aka Tr0llboy, who recently “joked” about beating a commenter in the head with a lead pipe.

  58. your pet theory is toast

    That’s not an “argument”, Tr0llboy. I suppose that’s all you got, though.

    1) WRONG -

    Uh … no. Sorry, Tr0llboy. And I’m not going to rehash it for you again just so you can pretend it never happened again. That’s your game, Tr0llboy. And it appears that you’re stuck with it until you see a shrink and get the prescription you need.

  59. Software is equivalent to firmware is equivalent to hardware.

    What part of this confuses you Malcolm?

  60. Sorry Malcolm – squint as I can, you have made no point here. Plus, given the FACT that you have admitted knowing the controlling law on the topic, it appears merely that you are trying to kick up some dust instead of helping out your pal 6.

    What’s up with that?

  61. Mindless rubbish from you, mr Internet tough guy until you supply what you said that you were going to supply and we reduce your pet theory into smoldering ash.

    Still waiting.

  62. LOL – more of the mewling QQ Internet tough guy routine and guaranteed no actual action from Malcolm as to using any of the Office post grant procedures.

    You sure do ‘talk’ a lot without any action Malcolm.

  63. Obviously, the comic book you refer to was not correct. You might want to review Bilski and other legal tomes that can set you straight and being you back to the world to talk about actual US law.

    Don’t forget to return the shiny helmet to Malcolm for a new buff job.

  64. You are still clueless 6.

    Where’s the abstraction and ladders of abstraction discussion, which you said that you would provide?

  65. Did Vivika M. or Francis come up with the name ‘Spammy McFilter?’

    Those with a modicum of intellectual honesty want to know.

  66. LOL – now square this with Nuitjen.

    Yeah, that’s what I thought.

    Show Nuitjen was ‘correctly decided’ AND have your position here hold water.

    (lol – careful, the last time you tried to square court cases did not turn out well for you).

  67. LOL,

    Malcolm descends into his accuse-others-of-what-he-does tactics because he has no answers.

    He is the one w@nking.
    He is the one using svckpuppets.

    And all he is left with is his pathetic feigned an projected ignorance.

    The best part is that he seems clueless as to how pathetic he has become.

  68. 1) WRONG – you failed to explain this and I explicitly asked you to explain it. Instead, you ran away and let your pet theory go up in smoke.

    Check the archives (and note that I even told you that I would be referencing the archives often given your monumental FAIL.

    2) your pet theory is toast – and the only ones to ever agree with you were Keeping It Real, Robert, Francis, Shrivan, and Vivika M – all svckpuppets from the person who QQed up a storm and swore he hadn’t used such in years.

    Two words (still) for you, Malcolm: Hypocrite and Blatant 1iar.

    LOL – as far as svcking to be you – you are the one in your very first substantive attempt to square Prometheus with the precedent case most on point that you tossed your pet theory into the bonfire of your making.

    Mmmm, toasty !

  69. you do not come across as

    *click*

    LOL. Seriously, Tr0llboy, you do crack me up.

    Anytime you want to have a grown-up discussion about the issue I raised, all you need to do is … grow the fk up.

  70. Malcolm, you are aware of your

    *click*

    Tr0llboy’s goin’ off the rails. Nitey nite, Tr0llboy. Stay out of those bushes or your parole officer will be upset with you again.

  71. Tr0llboy: claims being completely done in the mind is NOT the point under discussion.

    Uh … work on the reading comprehension, Tr0llboy. I know your li’l club just despises discussing certain things but you can do better than this. Here it is again. Rest assured I know it’s a painful subject for you to discuss (like just about everything that doesn’t involve insulting someone who dared question the awesomeness of any of your beloved patents or their righteous owners):

    We’re talking about automating a new series of mental steps that a twelve year old could perform in her head but never did (or if the recited thoughts were ever performed, they were never published). Is that just a “103 problem”?

    It’s certainly not just a “103 problem” if the computer isn’t included in the claim. Does the recitation of a computer shift everything over to 103? Even if computers are old?

    You’ll need to acknoweldge, of course, the fact that if you can obtain a claim to an old computer that “stores [new fact] and transmits [new fact]“, you are effectively preventing me from saving a new fact onto my computer.

    Good luck, Tr0llboy. None of us have much hope for you at this point but, heck, we can pretend just a little while longer, can’t we?

  72. Nice (attempted) deflection and misrepresentaon.

    Malcolm, you are aware of your ethical duty to obtain the broadest patent rights for your clients, right? You know, the very thing you paint as an ‘evi1′ thing?

    You might try reading your posts sometime – you do not come across as rational, ethical, or competent – and you are clearly in the wrong field.

  73. the claims are not to humans

    Uh … yes. Thank you for trying to catch up, Tr0llboy. The claims are to computers that recite steps that could be performed by a human. Well done! Now here’s where we left off so you have some more catching up to do:

    We’re talking about automating a new series of mental steps that a twelve year old could perform in her head but never did (or if the recited thoughts were ever performed, they were never published). Is that just a “103 problem”?

    It’s certainly not just a “103 problem” if the computer isn’t included in the claim. Does the recitation of a computer shift everything over to 103? Even if computers are old?

    Good luck, Tr0llboy.

  74. Sorry but NO, Malcolm – your strawman of clas being completely done in the mind is NOT the point under discussion.

    You keep on wanting to move the goalposts there and I keep on reminding you that such strawmen are not allowed.

    Try to keep up, OK, pumpkin?

  75. Malcolm’s script is on fire
    it’s a table made of straw and on fire that he pounds.

    Weirdest. Blogtroll. Ever.

  76. Your big problem Malcolm is that the claims are not to humans (only – and in line with your strawman of claims being COMPLETELY mental steps).

    That is one big FAIL for you.

    (and yes, the caps are well worth it)

  77. You really need to get into a line of work

    LOL. The amateur blogtroll and fulltime s0ci0path is now giving career advice.

    Your deficit on ethics impacts the rationale for you doing your job.

    Is this the sort of gibberish that ends up in your patent applications, Tr0llboy? Oh right: you’ve never drafted one and you believe that you can avoid your prior art disclosure duties by using mailroom staff to screen and throw away registered mail sent to your attorney. Too funny.

  78. doesn’t that link completely ignore the (now crisped) Malcolm pet theory

    1) No, it doesn’t, Tr0llboy. This has been explained to you before, several times. But you’re a s0ci0path and a compulsive l i a r so you pretend otherwise.

    2) My “pet theory” isn’t a “theory”, Tr0llboy. It’s the law. All claims in the form [oldstep]+[newthought] are ineligible under 101. You’ve been asked for years to present a claim in that form that doesn’t effectively protect the ineligible subject matter (at least with respect to those practicing the prior art eligible step). You’ve never succeeded in doing so. Neither has your buddy Gene Quinn. Neither has Eric Guttag. Nobody has. And nobody ever will. That’s not a “theory”. That’s just a fact.

    It must really su ck to be you.

  79. 101Sockwanker: Will you please reconcile your proposition with the legal doctrine of “Integration” ?

    Exactly what “proposition” are you referring to?

  80. Patenting Device Attached to a Human is OK: Ex Parte Robert S. Bray, 2013 WL 3293616, Appeal 2011-013427, Application 11/686,054 (PTAB 2013) (“The claims recite a device positioned between two vertebrae not, for example, a human comprising a positioned device. The claims relate only to the correct placement of the device in the human patient, and as a whole, do not encompass a human organism. There is nothing in the statute, and we are unaware of any case, that categorically excludes such devices.”)

    It’s remarkable that the PTO continues to struggle with this rather silly issue. I recall a similarly bizarre case a while back involving a claim to a new turkey baster, wherein the turkey baster “comprised an embryo.”

    It’s a simple analysis: if the (properly, structurally) claimed apparatus or device by itself is new and non-obvious, then it doesn’t matter if the claim further recites a human being (or a part thereof) in the device or attached to it.

    Example (necessary structural limitations omitted):

    1. A new, non-obvious spaceship.
    2. The spaceship of claim, wherein said spaceship comprises a human.

    Both claim 1 and claim 2 cover a spaceship with a human being inside. Both are eligible. There are no 101 issues presented. The claims don’t “cover a human being” or protect any part of a human being. They cover only the invented device and narrower embodiments thereof.

    In any case involving an inventive apparatus, there is no need to claim the human being or body part. There is also no need to disclaim the human being or body part.

  81. Concepts that need to be taken account of in any intellectually honest conversation.

    LOL. It’s always funny when Spammy McFilter pretends to have any interest in “intellectual honesty.”

  82. In the long run, we are all dead – everything is transistory.

    Deep stuff. And there’s no such thing as “matter.” It’s all just vibrations, man.

  83. Send the signal in the form of a high powered laser and stick your hand in the beam. Then tell me it’s not tangible.

    Receive the signal on the other end after the propagation delay, and it’s reasonable to say that in the interim, the data was stored.

    Well done.

  84. how is software different from hardware

    This guy allegedly prosecutes software applications and he doesn’t know the difference between software and hardware?

  85. the printed matter doctrine

    Say, Tr0llboy, where is the statute that says you can dissect claims when performing a 103 analysis? Or is that a Supreme Court case that says that?

    It’s funny how you and your bffs Gene and Eric get sooooooo worked up about analyzing claim elements for eligibility and their relationship to the prior art in a 101 analysis but then it’s perfectly fine to do that same analysis under 103. Except you never seem willing to discuss the remarkable similarity between the two analyses and their legal history. It’ somehow not allowed. What’s up with that? Seems just a tad “intellectually dishonest”, as your beloved hero and mentor Gene Quinn would say.

    Let us know when you’ve grown up and you’re ready to have the discussion. Or you can just continue flinging your monkey dung and screeching irrelevant bullhockey in all caps, as if that makes you more coherent.

  86. Send the signal in the form of a high powered laser and stick your hand in the beam. Then tell me it’s not tangible.

    Receive the signal on the other end after the propagation delay, and it’s reasonable to say that in the interim, the data was stored.

  87. I’ve obtained patents with claims to software per se (multiple times), with no objections under 35 USC 101. See, for example, Claim 16 of US 6895502

    That’s nice, EG. That claim is a pile of ineligible, unenforceable dogpoo.

    Fyi, claim 1 of that patent is some laughably obvious cr*p. Ask your client if he wants me to tank it for him. I’ll do it for cheaper than it cost to prosecute the application, guaranteed.

  88. Looks like Tr0llboy is crying in his bunker again. They’ll have to pry his precious j-nk patent out of his cold, dead (and, of course, babysoft) hands.

    Here’s the issue, Tr0llboy:

    We’re talking about automating a new series of mental steps that a twelve year old could perform in her head but never did (or if the recited thoughts were ever performed, they were never published). Is that just a “103 problem”?

    It’s certainly not just a “103 problem” if the computer isn’t included in the claim. Does the recitation of a computer shift everything over to 103? Even if computers are old?

    You’ll need to acknoweldge, of course, the fact that if you can obtain a claim to an old computer that “stores [new fact] and transmits [new fact]“, you are effectively preventing me from saving a new fact onto my computer.

    Go ahead and answer. Or forward to your bffs Eric or Gene and let them take a stab at it. For once.

  89. ANTHROPO

    *click*

    You keep screaming that, Tr0llboy, but it doesn’t get you anywhere. We are talking about claims that are written functionally and which describe steps of receiving, storing, processing and outputting information. Brains perform those steps. Computers perform those steps. That’s all the matters.

    A claim to a new method of lifting a bucket of gravel is anticipated by a human lifting a bucket of gravel. It doesn’t matter if the only example in your specification describes using a pink fork lift the bucket. You can screech your all caps, bold b-loney in the Examiner’s face all day long (you’ll do that anyway, of course) but it won’t matter. And it shouldn’t matter.

    Try writing a claim that describes your “new machine” structurally rather than just claiming its new function. That might help.

  90. “tangibly record ON something that is not tangible.”

    Are you unfamiliar with how a radio works or what bro? Because I presume that you are, based on your comments. Familiarize yourself, and then come on bak.

    “How do you put tangible on the intangible?”

    I never said you do, and neither does the claim.

  91. “:. You cannot have ‘abstract’ and fixed in a tangible media”

    Sure I can, so long as I’m using the word “abstract” in the patent law connotation.

  92. By pressing a button “D’Oh! – said inthe best Homer Simpson tones.

    You miss the point 6 – tangibly record ON something that is not tangible. How do you put tangible on the intangible?

    Then take a larger view of the intellectual honesty required by my post at 9:44 AM.

    Face it 6 – these concepts are way out of your league (in fact, these are like at least four rungs up while you cannot even reach the first rung of the ladder).

  93. “You need to understand the exceptions to the printed matter doctrine which destroys your objection of “since software is written.” ”

    PMD doesn’t even apply to 101 brosensky, which “destroys” your point behind your entire drivel laced post.

  94. Yeah, there was a book all about it that I found about half a year ago. Indeed, it purported to pretty much cover them all. Turns out info processing isn’t one, and neither are softwares or “business processes”.

  95. “How do you ‘tangibly record’ on something that is not tangible?”

    By pressing a button? I mean, buttons are tangible. I presume the pressing of a button would be somewhat tangible.

    Although, in either event, I now think the actual basis for the opinion is actually where the PTO likes to see “non-transitory” in front of the claim, not merely “tangible”. This I wasn’t aware of until I just found out today. Crazy PTO and their interpretations. The reason for this is because Kappos read Nuijten and in Nuijten they say that the signal is tangible, somewhat, but it is “transitory”. So, K man said they needed to put in “non-transistory” and likewise, putting in “tangible” didn’t really matter. Just found that out this morning actually. It’s du m sure, and it doesn’t affect my applications that much, but that’s apparently how it breaks down, all because of the language used in Nuijten.

    Or heck, who knows? This is PTO reasoning. And we could simply look up the decision and read it I suppose. Though that would require effort.

    “Still waiting for Prof. Crouch to post a story on something several weeks old now?”

    Or you, you can write it an submit it to him for publication if you like. Meh, whoever.

  96. In the long run, we are all dead – everything is transistory.

    On the other hand, look up in the night sky and see signals – so called transitory signals – that have been around far longer than anything made by the hand of man, even far longer than man himself.

    Concepts that need to be taken account of in any intellectually honest conversation.

  97. I need an APJ job apparently. Where else can you make more than private counsel and know less?

  98. However, that grates against reality. You need a machine to perceive a signal, and it’s transitory by its nature.

  99. Please explain how a “tangible computer readable storage media” includes a signal. Reality is where your analysis falls apart. You can’t touch and store data in a signal.

  100. PTAB has gone off the deep end. By that logic no process is patentable as any process invented by man, by definition, is performable by man. There may be tools involved, but the process is being performed by man.

    Who are these people that the with whom PTO has rushed to fill the PTAB?

  101. “Patenting Method that Could be Performed by a Human: Ex Parte Xu [HEWLETT-PACKARD], 213 WL 3363011, Appeal 2010-009107, Application 10/767,075 (PTAB 2013) (“[C]laim 1 as a whole is directed to a sequence of steps that can be performed by a person. Accordingly, claim 1 is drawn to patent-ineligible subject matter and invalid under § 101.”)”

    This APJ needs some serious remedial patent law education.

  102. Another thought that happens to stump your techdirt friends 6.

    They say that copyright is enough protection for software. But what is one of the requirements for copyright? That’s right – fixed in a tangible media.

      BOOM YEAH

    . You cannot have ‘abstract’ and fixed in a tangible media. You have a THING when you have something fixed in a tangible media. That THING is a machine component – a manufacture.

    LOL – ask your techdirt friends to explain that next time you try to be a wanna-be there.

  103. Too bad the guy blowing on Malcolm’s mistake is not wearing a cheerleader outfit – it would have been a giveaway for Leopold.

  104. 6,

    You need to understand the exceptions to the printed matter doctrine which destroys your objection of “since software is written.” You are allowing your wanna-be association with your techdirt ‘friends’ to blind you to the actual controlling law (of which, even Malcolm has volunteered admitted knowing).

    It is very much a manufacture. Your comment (paraphrasing) of ‘product on the one hand but manufactured on the other’ is completely asinine. You do realize that products are manufactured, right? Does ‘software’ exist before it is manufactured? This reminds me of the Great Hall experiment with the two computers, one with software, the other without. The great experiment that you failed miserably at. The great experiment that no one was able to overcome. The great experiment that Ned Heller and Malcolm refused even to engage.

    I can understand the ‘shorthand’ notion from those like Fish scales who would view it as a process, as the courts themselves sometimes take that same shortcut. But that would be a misunderstanding to not recognize that it is a machine component, and much like rivets. tires and bullets, is a manufacture unto itself, and whose utility is achieved through the use of that component in the larger item (hence, use and process are thus entwined). But just like the rivet sitting in a box, not yet used, just like tires sitting in a rack, not yet installed on a car, and just like bullets, sitting in a box, make no mistake – these items, these components are every bit as patent eligible, and every bit a manufacture.

    Further, look to Chakrabarty as even the Supremes said that attempting to exactly fit into one category is a mistake (there, the categories under consideration were manufacture and composition).

    Frankly, it is obvious that you are way over your head on the legal considerations here.

  105. AnotherExaminer,

    Also, I’ve obtained patents with claims to software per se (multiple times), with no objections under 35 USC 101. See, for example, Claim 16 of US 6895502.

  106. Because they’re pretty much all involved in the useful arts.

    LOL – 6, do you even know what the term ‘useful arts’ includes?

  107. Malcolm,

    I’ve obtained patents with claims to software per se (multiple times), with no objections under 35 USC 101. See, for example, Claim 16 of US 6895502.

  108. LOL – about any thing of legal substance, 6. How do you ‘tangibly record’ on something that is not tangible?

    Where is the discussion on your precious ladders of abstraction? Still waiting for Prof. Crouch to post a story on something several weeks old now? Do you really think that is going to happen given that the good professor has canvassed a different selection of PTAB rulings? Your internet toughguy bravado of ‘anytime’ rings hollow.

    I laugh a gazillion laughs at your ‘abstract’ pet theory that fails the basic workings of any engineering discipline.

  109. AnotherExaminer,

    Process or manufacturer, whichever fits (and it need only fit into one to be statutory). Also, how is software different from firmware or hardware which are both statutory? And Gottschalk v. Benson explicitly says it wasn’t ruling on whether computer programs were statutory (which is what software is).

  110. The alcohol on fire is MM’s theories on 101. The beer is patent law. The burnt guy is MM. The guy on the side is one of MM dopey buds.

    The video is MM trying to pour his theories into patent law and then swallow up patent law. Patent law has other ideas.

  111. Looks like fish says process, and anon says manufacture. On the one hand, it seems like a product, on the other we have anon stating that it is somehow “manufactured”, though it wouldn’t really seem to meet that term on its face since software is written, not “manufactured”, and then we have fish stating that it is a process, even though presumably he means it is instructions for a process.

    Frankly it obviously isn’t any of the above, and even if it were, it would be crossing the statutory lines or be ambiguous as to which class it fell into as even the proponents can’t decide amongst themselves where it belongs.

  112. LOL.

    I have seen that link somewhere before. Why, wasn’t it Malcolm that was the first to post that link? And doesn’t that link completely ignore the (now crisped) Malcolm pet theory?

    LOL

  113. What statutory category do you think software per se falls under? Just curious.

    Manufacture.

  114. Yes … which is why real attorneys don’t get too worked up over these rejections. None of these claims were rejected as being directed to an “abstract idea.” They were rejected because the PTAB (and USPTO) oftentimes construes claim language unreasonably to include software per se or transitory, propagating signals. Either way … it is extremely easy to fix.

  115. I noticed that Dennis didn’t select any of the multitude of cases in which the PTAB reversed a 101 rejection of computer-related invention.

  116. Will you please reconcile your proposition with the legal doctrine of “Integration” ?

    You can use this link to gets some basic guidance.

    link to uspto.gov

    “Crickets Chirping”

  117. “And on top of that, it should offend your intellect for the PTO to issue such nonsense and expect you to agree with their position”

    I really do think that there is a nuance that you’re missing in the IBM case. They did not, mind you, stop holding non-transitory mediums as being statutory. At least not in that case. They they <3 holding those statutory (save perhaps in the odd case where an abstract idea that is easy for all to see is involved, like Cybersource if it happened at the board).

  118. “This matters to real businesses from which you derive your income.”

    The “real businesses from which I derive my income” would survive if we simply provide protection for the traditional useful arts. In fact, some of them might just prosper even more. Know why that is troll-bro? Because they’re pretty much all involved in the useful arts.

  119. “signal is a tangible, non-transitory computer readable storage media.”

    I would bother, but instead I’ll simply point out that the claim doesn’t call for a “tangible, non-transitory computer readable storage media.” It says, rather, “executable instructions tangibly recorded on a computer-readable media”, according to D anyway. Notice that the instructions might be tangibly recorded on a signal. As in, you use a radio to broadcast in a tangible fashion (dialing a knob maybe or pushing a button) to record instructions (1s and 0s) on a signal. I suppose is the thinking anyway.

  120. EG, 101 requires whatever you’re claiming to be under one of the statutory categories. What statutory category do you think software per se falls under? Just curious.

    I’m also curious as to your “real world” where software per se was ever allowable. The Supreme Court has only ever allowed software that was part of a machine that particularly transformed matter (i.e. rubber). Even in Gottschalk v. Benson the binary to decimal conversion was done on a computer recited with more specificity than most are today (i.e. using shift registers) and the S. Court said it was ineligible subject matter. The dicta in Benson is where the federal circuit pulled the machine or transformation test from, which is why I mention it.

  121. It appears that most of the claims would survive 101 if they were amended to positively recite a computer, server, processor, memory???

  122. The PTO’s position is that tangible does not exclude signals since tangible means capable of being perceived and you can perceive signals. Check out, i.e. google, the latest examiner training on 101 from August 2012 entitled “Evaluating Subject Matter Eligibility Under 35 USC 101: August 2012 Update”, and specifically slide 14 which says “Not acceptable to just add ‘physical’ or ‘tangible’ Nujiten’s ineligible signals were physical and tangible”.

    I’m not saying it is right, and like most examiners I’m sick of the 101 rules changing day to day, month to month, and year to year. However, examiners generally try to do what we’re told to do, especially those that are not primary examiners.

    Note that the IBM claims do NOT have “non-transitory” in the claim language because IBM has an explicit policy on the matter because they’re afraid that non-transitory could be read as excluding RAM.

  123. mental steps

    LOL – one glaring problems with that Malcolm, Machines do not think.

      ANTHROPOMORPHICATION
  124. wherein patent lawyers struggle to grab the broadest claims they can grab without getting caught

    LOL – Your deficit on ethics impacts the rationale for you doing your job.

    You really need to get into a line of work that you can believe in what you are doing for your clients. At even the most fundamental level, you are in a perpetual state of dissonance that simply cannot be healthy for your soul.

  125. put your script down

    LOL – more of Malcolm’s accuse-others-of-that-which-he-does tactics.

    Except, Malcolm’s script is on fire from his own volunteered admissions.

    Reminds me of the adage:

      If you have the law on your side, pound the law.
      If you have the facts on your side, pound the facts.
      If you have neither, pound the table

    In Malcolm’s case, it’s a table made of straw and on fire that he pounds.

    Mmmmmm, toasty.

  126. Your pic does not capture me – I would be the guy toasting marshmallows on Malcolm’s pet theories.

  127. C’mon McCracken – the only one ‘burning themselves’ is Malcolm and his constant tossing of his pet theories into bonfires of his own making.

    (you’ll note that even 6 has scurried away and NOT presented what he said he was going to present because he knows that his pet theory would go up in smoke)

  128. babble with no statutory basis, and very little judicial basis

    Here’s an idea: put your script down and start using your brain. Good laws reflect good policy. Good policies are rational policies that are agreed on by people thinking rationally.

    There’s a reason we don’t let people patent facts or patent information: it doesn’t promote progress to do so. It merely promotes patenting. Now, around that policy is a giant fuzzy cloud wherein patent lawyers struggle to grab the broadest claims they can grab without getting caught. We can make it easy for the lawyers, or we can make it hard for those lawyers. What exactly is the argument for making it easier for patent lawyers to own and control new facts (whether stored/transmitted on a computer or stored/transmitted in your head) at this point in history?

  129. automating a known manual process is not patentable. But this is a 103 problem, not 101.

    Well done!

    Except that’s not what we’re discussing here. We’re talking about automating a new series of mental steps that a twelve year old could perform in her head but never did (or if the recited thoughts were ever performed, they were never published). Is that just a “103 problem”?

    It’s certainly not just a “103 problem” if the computer isn’t included in the claim. Does the recitation of a computer shift everything over to 103? Even if computers are old?

    You’ll need to acknoweldge, of course, the fact that if you can obtain a claim to an old computer that “stores [new fact] and transmits [new fact]“, you are effectively preventing me from saving a new fact onto my computer. Think about that. Others already have.

  130. I see lots of babble with no statutory basis, and very little judicial basis. The actual rule is that automating a known manual process is not patentable. But this is a 103 problem, not 101.

    This is the problem with legislating from the bench. We have a brand new patent law, and Congress still didn’t see fit to include any of this nonsense because it’s just that.

  131. By the way, this isn’t just “I’m a patent examiner; down with patents; who cares about the private economy, I get paid anyway” stuff. This matters to real businesses from which you derive your income.

    And on top of that, it should offend your intellect for the PTO to issue such nonsense and expect you to agree with their position. It’s sad that you aspire only to be a rubber stamp, but I guess that is the nature of government employment.

  132. Please explain how a signal is a tangible, non-transitory computer readable storage media. The language of the claim seems to exclude a signal. Please explain how the specification legally trumps the claim language.

  133. I’m particularly aghast that the Betts decision says software per se is patent-ineligible.

    Have you tried prosecuting a claim like this:

    Software, said software compatible with a Macintosh 6.0 or later operating system, wherein said software comprises the binary code sequence 010100010100100101010010101….

    or this:

    Machine-readable instructions wherein the instructions convert a machine into a new machine, wherein the machine is not a piano or anything like that but, like, a totally functional thing that can entertain people with selectable music, oh wait, no, that’s not what I mean, I mean a machine that sells you stuff, wherein …

    Maybe you should try that sometime.

  134. a sequence of steps that can be performed by a person is ineligible under 101?

    As a general rule, that’s not the law. A new method of transforming matter would very likely be deemed eligible, even if the method could be performed “by hand”.

    However, if the steps we are discussing are simply information processing steps, then the reason is that the invention is directed to a mental process (an abstraction) and the mere recitation of a computer to perform the steps or a step of communicating the information is insufficient to rescue the claim from ineligibility. The reason for the preclusion is that nobody believes that such “inventions” merit patent protection, except for a very, very tiny minority of patent exploiters.

    Maybe you should buy some billboards that say “every patent creates a job”. That might work wonders along the Texas freeway.

  135. “I’m particularly aghast that the Betts decision says software per se is patent-ineligible.”

    I thought the “software per se” thing was all the rage for the last 10 years+ in invalidating claims. Wasn’t it?

  136. With respect to the first 4 cases, and possibly the 5th case, the PTAB has run amok. I’m particularly aghast that the Betts decision says software per se is patent-ineligible. What “world” is the PTAB living in (it sure isn’t the “real world”)?

  137. “That IBM decision is pure lunacy. A tangible computer readable storage media is now an abstract idea and not an object. In what world does that make sense?”

    Oh snap!

    Idk, they said that in the spec it specifically noted that it could be a signal when it was being transmit from place to place. What did the actual wording of the claim say, and did the applicant argue that it couldn’t be da signal?

    I mean, because it says from the snippet that you’re talking about instructions that are tangibly put on to a medium, where, perhaps the medium could be a signal? Idk about that.

    Personally I simply find the “software per se” and “software” distinction to be the lunacy, as I’m sure, a generalist court at the top of our judicial pyramid would.

  138. That IBM decision is pure lunacy. A tangible computer readable storage media is now an abstract idea and not an object. In what world does that make sense?

  139. “…sequence of steps that can be performed by a person. Accordingly, claim 1 is drawn to patent-ineligible subject matter and invalid under § 101.”)

    Can someone please inform me why a sequence of steps that can be performed by a person is ineligible under 101?

  140. Yum the chum.

    Let’s ask Alice if the Supreme Court cares to clean up after its mess.

    (and if the Fourth Branch of the Government is even willing to listen)

Comments are closed.