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.”)

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

  1. 301

    Quite in fact, he is taking another (worthless) page out of the Blog-Like-CRP Malcolm handbook and appears to be aiming for several thousand worthless words in his posts.

    Such blatant shilling – as it is a well known fact that Ned posts for third party interests – is quite counter-productive to those interests.

    C’est La Vie.

  2. 299

    “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.’)”

    This rejection is on page 5 of the examiner’s answer. It’s beyond laughable. Yet two SPE’s signed off on the answer.

    Shouldn’t it be a requirement that SPE’s at least know something about the law? Anything?

  3. 298

    Stop the music, Ned.

    Literally.

    Stop.

    It is a canard to use something outside of the Useful Arts.

    Your continued dependence on the use of canards only weakens your point. Obviously, if you cannot come up with a legitimate example to use, you have no point that you can make.

    Ned – this is quite painfully obvious – why don’t you see this?

  4. 297

    You claim I am ignoring what you are saying – at the same time that you are ignoring what was said in Bilski.

    I repeat: didn’t my smackdown of you in Myriad – through the use of Chakrabarty and Funk teach you anything?

  5. 296

    Ned, your statement of “anon, 99.9% of your posts about my positions are distortions. Let’s just leave it at that.” is a blatant and completely unsupportable 1ie.

    We will NOT leave it at that.

    Now if you meant that my statements catch 99.9% of YOUR distortions to what is actual law, THEN, we could ‘leave it at that.’

    Could – but won’t, since I enjoy highlighting the excessive liberties you take as you post here for your third party interests.

  6. 295

    anon, the MOT is sufficient if the ineligible subject matter is integrated into a process that passes the MOT in a way that transforms it. See Prometheus’ discussion of Diehr that I have quoted here in this thread.

    Stop ignoring what I say. I use the word “integration” to speak to the Prometheus clarification of Diehr.

  7. 292

    101:

    Ned: "101, the
    integration/MOT test is the holding of Diehr."

    Ned, let me give you a chance to clear
    things up and perhaps save face. Are you claiming that the Machine and
    Transformation test ( MoT) and Integration are the same?

    Yes and no.  The
    Federal Circuit’s opinion in Prometheus illustrated the problem of
    interpretation of the Diehr holding.  In
    the Prometheus claims, the old elements of the claim did in fact involve
    transformations, but the new elements, the ineligible correlations themselves,
    were not integrated into that old process but instead only used results of that
    old process.  The Supreme Court then
    clarified that the basis of the holding in Diehr was that the ineligible
    elements, the Math, there were integrated into that old process, the whole process
    that passed MOT because it transformed matter into a new state, in a way that
    transformed that old process into something new, i.e., it
    produced properly cured molded rubber. 

    Because of the clarification, we now understand that the
    underlying process to which the ineligible subject matter is applied must pass
    MOT.  Further, the ineligible subject
    matter must be integrated into that process in a way that transforms it.  In a sense we have a double transformation.

     

    I hope you understand that the Federal Circuit seem to
    deliberately misinterpret the MOT in Prometheus in a way that made a mockery of
    it.  In a sense, what the Federal Circuit
    did was to say that if a claim was directed to a machine, a process that passed
    MOT, an article manufacture, or composition of matter, then it passed 101
    regardless that ineligible subject matter was simply tagged on.  This is a similar to a claim to the player piano,
    where the only thing new is music.  The
    music does not alter the player piano in any way.  Rather, the player piano is being used to
    play music.  The claim is not to the
    player piano, but to the music.

     
     
     

  8. 290

    Malcolm has had to spend a great deal of his time toning down his writing and focusing his comments over at PatentDocs, where he thinks he will get a more favorable ear.

    His latest personality there is “Friend of the Court.”

    He was actually civil for a a bit, before Doctor Noonan point blank told him his theory was wrong.

    You can tell it is our friend Malcolm from his goalpost moving and strawman building as well as the semi-cloaked [oldstep]+[newthought] pet theory being espoused. Malcolm remains the only person who actively espouses that (now crisped) ‘theory.’

    It is actually quite funny that Malcolm throws such a hissy fit here at Patently-O over ‘svckpuppets,’ and yet maintains a revolving door of them at the other fine blog. I guess his real nom de plume should be: Hypocrite.

  9. 289

    anon said: “Why, wasn’t it Malcolm that was the first to post that link?

    101 Integration Expert: Why, yes I believe it was.

    Anon: And doesn’t that link completely ignore the (now crisped) Malcolm pet theory?

    101 Integration Expert: As a matter of fact it does. BTW, where is MM. I have not heard a peep out him about his theory since I reposted the link, debunked his theory in this thread.

  10. 288

    anon said: “There is no honest way that you can re-import a requirement of MoT that the Supreme Court point blank said is not there. It simply does not matter that they did not give an alternative – the DID give you the directions that you are attempting to violate. YOU stop”

    Well said but it appears lost on Ned. It seems he will never stop with the MoT

  11. 287

    Les said : “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.”

    You are absolutely right Les. I really want to read the actual decision. Anyone have a link? I searched the PTAB data base but it does not show up. Ex Parte Xu [HEWLETT-PACKARD], 213 WL 3363011, Appeal 2010-009107, Application 10/767,075 (PTAB 2013)

  12. 286

    Furthermore you did not justify your combining of the two different legal precepts of “Integration” and “Machine or Transformation Test” into the “integration/MOT” . Both Prometheus and Diehrs claims pass the transformation leg of the CAFC MoT test . And both Prometheus and Diehrs claims were “integrated.” The difference between Diehr and Prometheus is “Statutory Integration.” The LoN in Prometheus, standing alone, is “Integrated” according to the common and contemporary definition of the term. (See my post at Jul 12, 2013 at 05:28 PM). The “process” the LoN is used in is also “Integrated” according to the same definition. However the claims as a whole pre-empt the LoN, therefore the claims are non statutory. On the other hand, Diehr’s claims as a whole are “Statutorily Integrated” because the claims as a whole do not pre-empt the formula that represents a scientific truth.

    MoT remains an important and useful clue and can help add to the evidence a claim is eligible. But claims can be statutorily integrated, even without passing the MoT. on this congress and the Supreme Court have been clear.

  13. 285

    Ned: “As stated by Breyer in Bilski, the MOT is the gold standard”

    I just read Bilksi and there is no such statement by Breyer: See: /media/docs/2010/09/08-964.pdf Did you just make that up?

    Ned: “although not the exclusive test. It is more than a clue. ”

    I also searched for that statement in Bilski, that MoT is “more than a clue” and guess what, it does not exist either. In fact, Breyer says Machine or transformation has always been a clue. See Breyer in Bilski: “….the Court has stated that “[t]ransformation and reduction of an article to a different state or thing is the clue to the patentability of a process claim that does not include particular machines.” and “……the machine-or-transformation test has always been a “useful and important clue,” …..” Page 3 Cite as: 561 U. S. ____ (2010) 3 BREYER, J., concurring in judgment at 589.

    If you are not going to be truthful on such details how do you expect to have any credibility?

    Ned: I use the shorthand “integration/MOT” to reference the Diehr holding. Don’t tell me that there is no Diehr holding.

    I read Diehr as well and the fact that the claims used one or more machines, and it’s end result was that of a transformation of the type in Deener, was indeed “helpful” to the Court in determining the invention “a patentable ‘process.’ But that was hardly a bright line test of machine or transformation, as held in Bilski by the CAFC. The MoT “Test” as established by the CAFC has the machine performing all the method steps, or a transformation of chemicals/liquids into other chemicals or solids, as “the” requirement of 101 eligibility, and as “the” definition for process. But as we know the Supreme Court struck that definition down.

    Ned: Now, tell me of any process that did pass the test used in Diehr, and described in Prometheus that was nevertheless held eligible.

    The above sentence makes no sense contextually or legally. There was really no bright-line test used in Diehr. There was a claims as a whole approach that consisted of a concept, application, and integration analysis. In addition there was the recognition of various machines and a resulting transformation in the method steps, that served as clues to patent eligible subject matter, and helped the Court reach its decision. You have digressed to the point where you have no substance whatsoever in your arguments.

  14. 284

    Specifically Ned, from the other thread:

      What’s the point of your post Ned? Congress writes patent law. Whether or not a Surpeme court case exists on any particular pinpoint area of legislative law is completely irrelevant.

      Point in fact: you are trying to write your own law and ignore the actual statutory law that Congress has written.

      Sorry – no one died and made you the despotic king of the US and you simply don’t have that authority. It remains your ETHICAL duty to acknowledge controlling law.

    . Law is not only Supreme Court law, Ned. In fact, with patent law (per the constitution), the Supremes should not be writing patent law at all.

  15. 283

    Plain and simple Ned (again):

    Bilski: MoT NOT REQUIRED
    Prometheus: MoT not sufficient.

    What part of this do you REALLY not understand?

  16. 282

    As stated by Breyer in Bilski, the MOT is the gold standard, although not the exclusive test. It is more than a clue. All nine justices would be highly credulous of any process that did not pass the integration/MOT test. It may not be exclusive. But the SC has never authorized any process that did no pass the test.

    That is some SERIOUS twisting of the actual holding in Bilski that reveresed the en banc CAFC decision requiring MoT.

    And then using the minority view of Breyer to imply somethign that the whole Court would believe in is deceptive at best.

    You really have no shame in peddling your agenda, do you Ned?

  17. 281

    I never said that. Never. That is YOUR strawman.

    That said,

    LOL – W T F – back to back sentences showing the goalposts being moved.

    See also, my post on what your ethical duty entails as to law (and NOT just law as heard by the Supreme Court, but legislated law as well).

  18. 280

    Ned – coming as it is that I used your own supplied source on the difference between holding and dicta on the case of Bilski to break you of your repeated mantra that Bilski held that business method patents were verbotten, you hre saying that I constantly misstate the holding of Bilski is sublimely perverse.

    Didn’t you learn anything from whay I taught you in the Myriad case?

  19. 279

    Ned: “101, the integration/MOT test is the holding of Diehr.”

    Ned, let me give you a chance to clear things up and perhaps save face. Are you claiming that the Machine and Transformation test ( MoT) and Integration are the same?

    Yes or No

    If yes, then citation please. Not your interpretation. Not your conflation. I need that exact quote, with that exact terminology, from Diehr so holding an, “integration/MOT test” .

    : Usual Silence::

    Now, on the other hand, I know there is a MOT test from the CAFC in Bilski II. I also know there is an “Integrated” analysis from the Supreme Court in Prometheus. In fact I can provide you the exact quote from both cases using that exact terminology.

  20. 278

    101, the integration/MOT test is the holding of Diehr.  Ineligible subject matter implemented or applied to a process the patent laws were designed to protect, e.g., the MOT, are eligible. 
     
    Prometheus described that the ineligible subject matter transformed the underlying process.  This was called “integration.”
     
    I use the shorthand “integration/MOT” to reference the Diehr holding.  Don’t tell me that there is no Diehr holding.

     
    Now, tell me of any process that did pass the test used in Diehr, and described in Prometheus that was nevertheless held eligible.
     
    That’s right.  None.
     
    Nada.
     
    As stated by Breyer in Bilski, the MOT is the gold standard, although not the exclusive test.  It is more than a clue.  All nine justices would be highly credulous of any process that did not pass the integration/MOT test.  It may not be exclusive.  But the SC has never authorized any process that did no pass the test.
     

  21. 276

    Ned:That said, give me one example of any process that does not pass the integration/MOT test that has ever been held eligible by the Supreme Court.
    Just one.

    101: Ummm… There is no such thing as an “integration/MOT test.” Challenging me to prove something that does not exist, and that I have never argued exist, is certainly a fallacious argument. Let’s see which fallacy would that be, a straw man or a red herring. Well, whatever the case, its plain whacky.

  22. 275

    101 Integration Expert: MoT remains an important and useful clue. But not a requirement. Not even a test. And certainly not definitive of “Integration”.

    Ned: 101, I don’t say that either Prometheus or Diehr held that all processes must pass the integration/MOT test. I never said that. Never. That is YOUR strawman.

    101 Integration Expert: But you did just say “integration/MOT test.” Which in effect would make MoT and Integration the same thing. So I am correct in stating you argue MoT is definitive of Integration. Which of course you have failed to prove with ANY Court citation. Look, you have made it clear you have a fundamental belief in the righteous of the MoT test. So, why don’t you stop playing these silly games. The more intellectually dishonest you attempt to be the more credibility you lose as someone that has any expertise on patent law.

  23. 274

    101, I don’t say that either Prometheus or Diehr held that all processes must pass the integration/MOT test. 
     
     

    I never said that.   Never.  That is YOUR strawman.
     
    That said, give me one example of any process that does not pass the integration/MOT test that has ever been held eligible by the Supreme Court.
     
    Just one.
     
     
     
     

  24. 272

    query, of course anything that is functional in the physical world should be presumptively eligible.  But generally, a piano is not a new piano because of the music it plays.

     
    Sent from Windows Mail
     

  25. 271

    generally do the Arrhenius equation in my mind

    LOL – 6 steps towards ANTHROPOMORPHICATION.

    (guess what DID do that 6? – that’s right, software and a GREAT COMPUTER BRAIN)

    LOL – the more games you play with 101 on this topic 6, the more your overall position is buried.

  26. 270

    Ok that’s cool, but I’m asking for a specific reference that shows that. In other words, I see your assertion as to the state of the art and I simply state I see no evidence of it.

    Also, your f) is not the same f) as claimed. Note that your f) lacks constant determination, and it also lacks the determination of the temperature closely adjacent the mold. Indeed applicant stated in the case that they improved the ability to monitor the temperature from closer than anyone had been monitoring it from before (though 25 years later someone on the interwebs presented some art challenging this which was not present in the case when it was before the USSC).

    So after noting the above noted differences do you still find them to be old steps? And again, which specific reference shows them to all be old steps (preferably all in one reference)?

    I don’t think you have such a reference, at best you have an amalgamation of 3+ different references you’re peicemealing together. And at worst you have nothing. Frankly I think you have nothing, just like the examiner did in the case, and just like the USSC did in the case.

    _____

    Also that’s cool about what supposedly happens when “I” open a press, but the claim does not say do it when “I” open a press. It says open the press when a certain comparison is made right? And the comparison includes a calculated total required cure time according to a specific calculation set forth in the claim. I’m going to be honest, when “I” open a press I don’t generally do the Arrhenius equation in my mind and then do a comparison with the value that popped out of the Arrhenius equation. In fact the USSC specifically says that when “I” (aka a skilled operator) did the process in the past “I” did no such comparison with a calculated value. Indeed the specification said that and the USSC took it at its word since there was no evidence the contrary.

    So my question still remains, though I’ll make it more specific for you. Which parts of that claimed step are, to you, an old step, and which parts are a new thought?

  27. 269

    >
    > Hello Ned:
    >
    > Now to deal with your gross negligence in ignoring Diehrs claims as a
    > whole in your proposition. I have reposted below the passage from
    > Prometheus describing Diehr’s “Integrated” Claims and put in caps
    > those points you ignore.
    >
    > “The Court pointed out that the basic mathematical equation, like a
    > law of nature, was not patentable. But it found the overall process
    > patent eligible because of the way the ADDITIONAL STEPS of the process
    > integrated the equation into the PROCESS AS A WHOLE. Those steps
    > INCLUDED  “installing rubber in a press, closing the mold, constantly
    > 1299*1299 determining the temperature of the mold, constantly
    > recalculating the appropriate cure time through the use of the formula
    > and a digital computer, and automatically opening the press at the
    > proper time.” Id., at 187, 101 S.Ct. 1048. It nowhere suggested that
    > all these steps, or at least the combination of those steps, were in
    > context obvious, already in use, or purely conventional. And so the
    > patentees did not “seek to pre-empt the use of [the] equation,” but
    > sought “only to foreclose from others the use of that equation in
    > conjunction with ALL OF THE OTHER STEPS in their claimed process.”
    > Ibid. These OTHER STEPS apparently added to the formula something that
    > in terms of patent law’s objectives had significance—they transformed
    > the process into an inventive application of the formula.”
    >
    > The “OTHER STEPS, or ADDITIONAL STEPS were  ALL old but they did not
    > ALL pass the MoT, as you so assert, and as that test was defined by
    > the CAFC and PTO,  Which completely destroys your premise that
    > “integration” in Diehr was limited to integrating underlying subject
    > matter into steps that passed the MoT.
    >
    > “The Court pointed out that the basic mathematical equation, like a
    > law of nature, was not patentable. But it found the overall process
    > patent eligible because of the way the additional steps of the process
    > integrated the equation into the process AS A WHOLE.  ” Prometheus (
    > Cap Emphasis Added )
    >
    > FACT: Note, the Court did NOT say “Integrated into the elements that
    > PASSED THE MOT.”
    > FACT: Some elements  PASSED THE SO CALLED MOT.
    > FACT: Some elements DID NOT PASS THE SO CALLED MOT.
    > FACT: Prometheus said Diehr’s  claims were “Integrated” into the
    > process as a WHOLE.
    >
    >
    > Ned: “To suggest that the MOT is to be ignored or discarded is a
    > suggestion that really has to be ignored.”
    >
    > No one has suggested that. MoT remains an important and useful clue.
    > But not a requirement. Not even a test. And certainly not definitive
    > of “Integration”. So stop the straw man statements and stop accusing
    > me of doing what you just did.

  28. 268

    Ned: “Thus, Diehr did hold the claims eligible because the math was
    > integrated into the molding process in a way that “transformed” the
    > process per Prometheus.  The underlyng process must be eligible and
    > the ineligible addition must transform the underlying process, e.g.,
    > pass the MOT. Transformation must be the result of integration.
    > Integration is the key.”
    >
    > There is no support in the passage from Prometheus you quoted for the
    > conclusory statements, you make above. Let’s set aside for the moment
    > your gross legal error of ignoring Diehr”s holding of “CLAIMS AS A
    > WHOLE” in your analysis, and just focus on the logic of your argument.
    > What you have been arguing in very guises is that “integration” in
    > Diehr, as described in Prometheus, is integrating the Arrheniius
    > equation into an iron age transformation, and this is the “sole”
    > reason Diehr’s claims are eligible. You then conclude all process
    > claims “must” integrate some mysterious underlying subject matter in
    > an iron age machine or transformation to be eligible.  You cite
    > Prometheus at 1298-99 as your only evidence. If this was true then
    > Prometheus claims would have been eligible because the claims
    > “integrated” a law of nature in the form of a naturally occurring
    > correlation, into a transformation of the type that passed the so
    > called MoT test. Yet we know Prometheus claims  failed to be patent
    > eligible, even though they passed the MoT exactly like you described.
    > Why is that Ned? This fact alone exposes the folly of your argument
    > and the faultiness of your logic.

  29. 267

    To suggest that the MOT is to be ignored or discarded is a suggestion that really has to be ignored.

    After the beatdown I gave you in the Myriad case by asking you to consider ALL of the Supreme Court 101 jurisprudence, AND the repeated beatdowns that I have given you on the HOLDING from Bilksi, you violate your ETHICAL responsibility for acknowledging controlling law (yet again) Ned.

    Please stop.

  30. 266

    Ned,

    Look at the CRP you instigate from those who don’t even know the basics.

    Plain and simple so ANYONE can understand: music is not in the useful arts. Full STOP do not pass GO – do not apply any other doctrines or rationales.

    The use of sonics for utility (process patents) IS NOT MUSIC.

  31. 265

    Query — if a certain sequence of notes (music) has an unexpected result, e.g., shrinks tumors, puts wild animals in a coma, causes rain, whatever — patentable?

    If no unexpected results, then maybe obvious?

  32. 263

    101,  The holding of Diehr I quoted was “described” in Prometheus to be “integration.”  The mathematical equation “transformed” the underlying process into an inventive application of the formula:
     
    From Prometheus describing, at 1298-99, the holding in Diehr:
     
    “The Court pointed out that the basic mathematical equation, like a law of nature, was not patentable. But it found the overall process patent eligible because of the way the additional steps of the process integrated the equation into the process as a whole. Those steps included "installing rubber in a press, closing the mold, constantly 1299*1299 determining the temperature of the mold, constantly recalculating the appropriate cure time through the use of the formula and a digital computer, and automatically opening the press at the proper time." Id., at 187, 101 S.Ct. 1048. It nowhere suggested that all these steps, or at least the combination of those steps, were in context obvious, already in use, or purely conventional. And so the patentees did not "seek to pre-empt the use of [the] equation," but sought "only to foreclose from others the use of that equation in conjunction with all of the other steps in their claimed process." Ibid. These other steps apparently added to the formula something that in terms of patent law's objectives had significance—they transformed the process into an inventive application of the formula.” 

     
     In Diehr, the molding process steps were described to be old. 
     
    The “e.g.” portion of the Diehr holding clearly is the MOT.
     
    Thus, Diehr did hold the claims eligible because the math was integrated into the molding process in a way that “transformed” the process per Prometheus.  The underlyng process must be eligible and the ineligible addition must transform the underlying process, e.g., pass the MOT.
     
    Transformation must be the result of integration.  Integration is the key.
     
    There is no ambiguity in either case that the reason the claims were allowed was because the integration transformed the underlying process.  None whatsoever. 
     
    To suggest that the MOT is to be ignored or discarded is a suggestion that really has to be ignored.
     
     

  33. 262

    If you google “History of Rubber Molding” in about 0.36 seconds you will get about 2,300,000 results. Then if you spend about 15 minutes reading on the history of molding rubber, particularly in google books, and viewing various pictures from the books you will learn that the process has always included:

    d) closing a press and keeping track of the time, ( many of presses have clocks/timers on them)

    e) heating the mold for a limited amount of time.

    f) and checking on the temperature during the process.

    Now whether all the steps as a whole, have been performed in the same order and time as Diehr’s process, and therefore novel, I do not know. But novelty is a separate issue from 101.

    6: Also, how is opening said press at a certain time an “oldstep+newthought”?

    Without getting into the intricacies of complex neuroscience let me simply say, each time you open the press you make a mental determination, and this requires a new thought process at the both the cognitive and neurological levels.

    Any more questions?

  34. 261

    ARRRRGHHHHH – Ned – the useful arts canard you are trying to pull is disingenuous and insulting to say the least.

    Plus your attempt at moving the goalpost FAILS as the question you should be asking is if the music CD (that physical thing of manufacture) is abstract.

    Two strikes with your single post. C’mon Ned – you HAVE GOT TO do better than that.

  35. 260

    Ned: “(e. g., transforming or reducing an article to a different state or thing),”

    e.g. means “an example”. This passage from Diehr is holding that an iron age transformation is “one example” of a statutory process. That is all. And that’s a far cry from your implications and various canards that machines or iron age transformations are:

    1. “The” test for 101 statutory subject matter.

    2. “A” test 101 statutory subject matter.

    3. “The” reason Diehr’s claims are 101 statutory subject matter.

    And the above passage from Diehr certainly does not hold or say, “integrated into … (old elements) that passed the MOT.” as you argued at Jul 15, 2013 at 07:19 AM. That’s your point of novelty fallacy. And perhaps most important to your entire carnard, you have failed to cite ANY holding that the “Integration” referenced in Prometheus requires integrating a process into elements that pass MoT. As the Court told you, MoT, is an important and useful clue. That is all. You do not collect $1000.00 .

  36. 259

    Ned: “(e. g., transforming or reducing an article to a different state or thing),”

    e.g. means “an example”. This passage from Diehr is holding that an iron age transformation is “one example” of a statutory process. That is all. And that’s a far cry from your implications and various canards that machines or iron age transformations are:

    1. “The” test for 101 statutory subject matter.

    2. “A” test 101 statutory subject matter.

    3. The reason Diehr’s claims are 101 statutory subject matter.

    And the above passage from Diehr certainly does not hold or say, “integrated into … (old elements) that passed the MOT.” as you argued at Jul 15, 2013 at 07:19 AM. That’s your point of novelty fallacy. And perhaps most important to your entire carnard, you have failed to cite ANY holding that the “Integration” referenced in Prometheus requires integrating a process into elements that pass MoT. As the Court told you, MoT, is an important and useful clue. That is all. You do not collect $1000.00 .

  37. 258

    One has a CD ROM, readable by computer, that varies from other CD ROMs in that it contains music that, when loaded into a computer, plays.

    The music is copyrightable. Does that fact make the music CD patenable?

  38. 256

    101, just in case, I will post the holding of Diehr once again:
     
    “[W]hen a claim containing a mathematical formula implements or applies that formula in a structure or process which, when considered as a whole, is performing a function which the patent laws were designed to protect (e. g., transforming or reducing an article to a different state or thing), then the claim satisfies the requirements of § 101.” 

     
     
     

  39. 255

    101, but it is, particularly in Diehr.  I have repeatedly quoted it to you.
     
    Here, let me try again:
     
    From Diehr at 192:
     
    “[W}hen a claim containing a mathematical formula implements or applies that formula in a structure or process which, when considered as a whole, is performing a function which the patent laws were designed to protect (e. g., transforming or reducing an article to a different state or thing), then the claim satisfies the requirements of § 101.”
     
    You will recognize the holding I quote you so often, and again, and again, and again, and again, and again.
     
    No matter how many time I quote it to you, you absolutely refuse to accept it.
     
     
     
     

     
     
     

  40. 254

    Ned: MoT is simply not the “holding” of either case. That is the argument we are having, and you are losing, very badly. Please present a Court citation that says otherwise and I will not only prove I can read, I will admit I was wrong, and send $1000.00 to your Paypal account.

  41. 253

    I am responding to your comment above at 7:11 – there is no conflation in my response.

    Try again.

  42. 252

    I also note that you remain silent to all of the points I present to you.

    LOL – we both know why.

  43. 251

    Ned,

    The accuse-others-of-that-which-you-do trick does not work for Malcolm, why do you think it will work for you?

    You are the one attempting to introduce MoT as some type of legal lynchpin into the conversation. That is the strawman. You are attempting to introduce something that has no place.

    All I am doing is lighting your strawman ablaze and burning it down to the ground.

  44. 250

    Software is independent of being fixed.

    LOL – so you think ‘software’ exists in the mind alone?

    You ARE confused as to what software is.

  45. 247

    anon, it is you who are erecting a MoT strawman.

    The difference between Diehr and Prometheus, as I have repeatedly pointed out, again and again and again, is

    Integration.

  46. 246

    I have a few questions integration expert. Specifically my question is which art renders all those steps old, as in, which specific references show:

    “(d) initiating an interval timer upon the closure of said
    > press for monitoring the elapsed time of said closure,”
    > OLD STEP: “(e) heating said mold during said closure to maintain the
    > temperature thereof within said range approximating said rubber curing
    > temperature,”
    OLD STEP: “(f) constantly determining the temperature of said mold at
    > a location closely adjacent said cavity thereof throughout closure of

    Also, how is opening said press at a certain time an “oldstep+newthought”?

  47. 245

    One of ordinary skill in the art would have understood that the claim language implied the use of a processor of some sort to execute the code, even if you did not.

    Please also note the suggestion that claim 1 be rewritten as a non-transitory computer readable medium claim.

  48. 244

    “the relation of copyright law applicable to something that is NOT abstract”

    Ned – would the software mentioned be copyrightable?

    It’s an easy question.

    It also has an easy (and direct) relation to an object of man created – manufactured – for a utility and as a component of a machine.

    (I forgot to add above one of the other points that I routinely make and that you do not bother to acknowledge: Patent eligibility of components – think rivets, tires and bullets).

    Your (continued) silence is my gold.

  49. 243

    Ned,

    It is you here that is erecting the strawman of MoT.

    How often must you be lectured on MoT? And how long will you attempt to insert/resurrect your talisman?

    This slinking down to the level of Malcolm and the accuse-others-of-that-which-you-do tactic is plainly visible to any and all readers. It is abject desperation.

    Just like you (AGAIN) shy away from the points I make regarding software:

      anthropomorphication and restriction of the mental steps doctrine,
      the controlling law of the exceptions to the printed matter doctrine,
      software as being equivalent to firmware and equivalent to hardware as a manufacture and component of a machine, and
      the relation of copyright law applicable to something that is NOT abstract

    Your silence speaks volumes. When you choose to be silent screams so loud I cannot hear your attempts to save your agenda.

    We both know why you do not address the points I make, don’t we? You still evade your ethical responsibilities both of acknowledging controlling law and obeying the rules of the blog about posts being of personal views only.

    C’est La Vie.

  50. 242

    Ned,

    Do you?

    But please, at least try to make a comment that has a point so that we can move the conversation forward.

    Pure name calling – that does not do it.

  51. 241

    101, are you trying to prove that you cannot read?

    1. Diehr held the claims there eligible because they were integrated into a process (the old elements) that passed the MOT.

    2. Prometheus held the claim there ineligible even though old elements passed the MOT. No integration.

    In both cases, the old process elements passed the MOT. In one case, there was integration. In the other there was not.

    Now stop it, please. Address the facts and holdings of the two cases and stop erecting strawmen.

  52. 238

    Thank you anon for that explanation, and all the excellent contributions you make to this blog.

  53. 237

    >
    > Ned: “The court did what I said they did and held what I said they held.”
    >
    > Not the Supreme Court. You believe “process” as a category is per se
    > abstract. And therefore a process must be subjugated to the other
    > classes of machines, manufacture or composition to be statutory. This
    > is your way of cabining software and business methods as eligible
    > subject matter, and effectively preventing such inventions from
    > receiving patents. But the flaw in your logic, as well as your legal
    > reasoning is that the Supreme Court never said such. In fact the Court
    > said the opposite. See Bilski: “Respondent Patent Director urges the
    > Court to read §101’s other three patentable categories as confining
    > “process” to a machine or transformation. However, the doctrine of
    > noscitur a sociis is inapplicable here, for §100(b) already explicitly
    > defines “process,” see Burgess v. United States, 553 U. S. 124, 130,
    > and nothing about the section’s inclusion of those other categories
    > suggests that a “process” must be tied to one of them.” (Bilski 2010)
    > The reason why a process is not tied to the other categories is that a
    > process is physical. A process stands alone and  is presumptively
    > “integrated”. A process is therefore not abstract. Like wise business
    > methods and software processes are not per se abstract. And as long as
    > business methods and software are not pre-empting a law of nature,
    > natural phenomenon, or other scientific truth, they are patent
    > eligible, period.

  54. 236

    Ned: “101, had the LoN been integrated in the process that passed the MOT, per Diehr, it would have been eligible.”

    101 Integration Expert: “Ned, in Prometheus, the LoN was “integrated” into a process that passed the MoT. Yet, the claim was ineligible because the process as a whole still still pre-empted the LoN. Proving that the Prometheus Court did not hold the MoT as required or sufficient, as anon has told you . In Diehr the formula was “integrated” into the process as well and the claim as a whole did not pre-empt the formula, therefore Diehr’s claims were statutory. Again, passing the MoT was not required or sufficient in either case. The Court will not let anyone pre-empt one of their implicit exceptions.”

  55. 235

    Ned,

    Water is a product of nature and is an ineligible element. Water as a solvent is not functionally different with anything it dissolves. Integration of water and chemicals A,B, and C (based on water’s functionality in dissolving) and integration of water with chemicals r,s and t – with no functional difference – IS STILL INTEGRATION in both cases.

    You are making things up whole cloth with your odd attempts at constructing a law of 101 to fit your agenda.

  56. 234

    Your reliance on MoT is unjustified.

    You neglect the second half of my paired statement:

    Bilski: MoT not required
    Prometheus: MoT not sufficient.

    As to readings of Supreme Court cases, well, let’s be accurate and simply say that I own you on the proper reading of Supreme Court cases.

  57. 233

    101, had the LoN been integrated in the process that passed the MOT, per Diehr, it would have been eligible.  The LoN in Prometheus was not integrated.

     
    Sent from Windows Mail
     

  58. 231

    anon, please stop it.   
     
    The court did what I said they did and held what I said they held.  Your rejoinder addresses a slightly different point and is in truth a strawman.  I never said that the court held that passing the MOT was required.  I said that if the ineligible subject matter is integrated into a process that passed the MOT the claim as a whole was eligible.  That is not the same thing.

     
     
     

  59. 230

    Anon: “Integration does not necessarily mean functionally different Ned. You are making things up out of whole cloth.”

    Yes, he is just throwing any stuff against the wall now to see if it sticks. No research. No Pin Cites. Just plain on BS.

  60. 229

    Ned: “Prometheus failed because of lack of integration. Stop misstating what I am telling you.”

    CORRECTIONS:

    There, you just proved you know not what you speak of. Prometheus claims failed because they claimed a manifest LoN. Had Prometheus process been integrated into a larger process that limited the claim, so that the claim as a whole did not pre-empt the LoN, the claim may very well have been eligible. Keep on spinning. Sooner or later you are bound to get dizzy and fall off, I hope.

  61. 228

    Ned: “Prometheus failed because of lack of integration. Stop misstating what I am telling you.”

    There, you just proved you know not what you speak of. Prometheus claims failed because they claimed a manifest LoN. Had Prometheus claims been integrated into a process that limited the claim so that the claim did not pre-empt the LoN, the claim may very well have been eligible. Keep on spinning. Sooner or later you are bound to get dizzy and fall off, I hope.

  62. 227

    Stop misstating what I am telling you.

    Ned – are you or are you not attempting to ignore the words that I am telling you from the Supreme Court in Bilski?

    Once again: Bilski: MoT not required.

    What part of this do you not understand?

  63. 226

    Integration does not necessarily mean functionally different Ned.

    You are making things up out of whole cloth.

  64. 225

    Ned, Why do you ask me to stop it when you are the one ignoring the words of the Supreme Court.

    Point blank: Bilski: Mot not required.

    There is no honest way that you can re-import a requirement of MoT that the Supreme Court point blank said is not there. It simply does not matter that they did not give an alternative – the DID give you the directions that you are attempting to violate.

    YOU stop.

  65. 224

    Ned: “101, the only claims that have passed 101 have integrated the ineligible subject matter into a process that passed the MOT.”

    So you have read every issued process patent and reached this conclusion ? Okay, lets see the citation to your research, or ANY research that proves the above assertion.

    ::Silence::

    Followed by more excuses, and another round on the merry go round!

  66. 223

    Ned: “Integration requires the ineligible subject matter to modify the operation or the functionality of the eligible subject matter so that it functionally different. This is simple.”

    Providing a proper pin cite would be simple. So where is your citation for such a requirement?

    :: Silence::

  67. 222

    Integration requires the ineligible subject matter to modify the operation or the functionality of the eligible subject matter so that it functionally different.  This is simple.

     
    Sent from Windows Mail
     

  68. 221

    101, the only claims that have passed 101 have integrated the ineligible subject matter into a process that passed the MOT. 
     
    Prometheus failed because of lack of integration.
     
    Stop misstating what I am telling you.

     
     
     

  69. 220

    anon, stop it.

    The SC has never approved of any claim under 101 except in one case: Diehr. They held there that the claim passed 101 because the math was integrated into a process that passed the MOT.

    The Supreme clarified in Prometheus that it is not sufficient that the some elements pass the MOT. What is required is that the ineligible subject matter be integrated into the elements that pass the MOT.

    They also said that the MOT was not the exclusive test, but they have provided no other.

  70. 218

    Ned: “Why don’t you get this?”

    Ask the Supreme Court. They are the ones that WILL NOT say it’s important that claims pass the MoT.

  71. 217

    Ned: “101, in context, to be integrated, the one has to modify the operation or functionality of the other.”

    In what context? That statement makes no sense.

  72. 216

    one is not describing a particular form. Such is software in the abstract.

    WRONG.

    The ability to have different forms does not mean that “no form” is allowable. As I indicated – you have made some unsubstantiated leap.

    Think AGAIN to my question on copyright: FIXED in a tangible media. This necessitates that you have an article of manufacture. PERIOD. Just because the article can take a number of different forms, doe notmean that NO ofrm can be taken and that you would still have software. Your logic is seriously flawed. You are chasing a pipedream of the ‘thought’ of software as software.

    WAKE UP.

  73. 215

    Why don’t you get this?

    Ned – why do you continue to ignore Bilski?

    Have you not learned your lesson in the Myriad case when you tried to ignore what I told you from Chakrabarty?

  74. 214

    Let me reiterate: if the old elements of a claim passed MOT

    Ned – you ignore the words of the Supreme Court (still):

    Bilski: MoT not required
    Prometheus: MoT not sufficient.

    You REALLY need to wean yourself off of your addiction to MoT.

  75. 212

    101, I am not saying that the elements that pass the MOT have to be new or old.  They can be either.  What is important is that they pass the MOT.
     
    Why don’t you get this?

     
    Sent from Windows Mail
     

  76. 211

    Ned: “101, you constantly demonstrate that you do not understand integration.”

    101 Integration Expert: In the controlling case law on the subject the Court writes:

    ““([u]nless otherwise defined, ‘words will be interpreted as taking their ordinary, contemporary, common meaning.”) [Diehr, supra, at 182.]

    When one checks the dictionary definition for the ordinary, contemporary, common meaning of “integrated” it says:

    “in·te·grat·ed [in-ti-grey-tid] Show IPA adjective: 1.combining or coordinating separate elements so as to provide a harmonious, interrelated whole: 2.organized or structured so that constituent units function cooperatively”

    Nothing about the ordinary, contemporary, common meaning of “Integration” says or implies, stripping away, ignoring, dissecting or any such act or state of separation. In fact in every 101 Court case since Diehr, the Supreme Court has refused to require a Machine or Transformation test, or a point of novelty inquiry in the 101 analysis, and affirmed the claims are to be considered as a whole.

    Any Questions?

  77. 210

    anon

    Why are you making this unsubstantiated leap Ned?

    And what exactly is "software in the abstract?" Is
    that like
    thinking about
    software?

    First of all, anon, the term software
    is thought to include everything from source code to object code to the  form it takes on a CD-ROM that is un-compiled, and to the compiled and linked form it finally
    takes in the computer in program memory.

    If one simply says software without
    ever describing what form, then one is not describing a particular form.  Such is software in the abstract.

     

  78. 209

    101 Integration Expert:

    Ned: Also in Diehr, the essential analysis there was that
    the allegedly ineligible subject matter, a computer program to calculate a
    particular mathematical formula on data collected from thermocouples in a mold,
    was integrated into the pre-existing molding process that was certainly
    patentable because it passed MOT.

    101 Integration Expert: In Diehr the alleged ineligible
    subject matter was the "Arrhenius equation", not the software program
    or the computer. Please see Diehr: “Arrhenius’ equation is not patentable in
    isolation, but when a process for curing rubber is devised which incorporates
    in it a more efficient solution of the equation, that process is at the very
    least not barred at the threshold by §101.” And nothing is "certainly
    patentable" because it passes the MoT test. Prometheus claims passed the
    MoT and those claims were not even eligible, let alone patentable. Finally, the
    Court has never said, “Integration” is simply Machine or Transformation, as you
    like to imply. If that was the case Prometheus claims would have been
    considered “integrated” and therefore statutory, because they passed the MoT.

    101, your post is a series of misunderstandings or strawmen
    or both.

     

    Let me reiterate: if the old elements of a claim passed MOT
    and the new subject matter, normally ineligible, is integrated into the old
    elements than the claim taken as a whole is eligible.

     

  79. 208

    101 Integration Expert:

    Ned: Regardless that the law of nature was new or old, it
    was not integrated into the old elements, the elements of passed MOT

    101 Integration Expert: Eligibility does not depend on
    whether a LoN is "integrated" into any individual elements, be they
    new, old, MoT or not. The Court looks to see if the LoN is integrated into the
    process as a whole. See: . “In determining the eligibility of respondents’
    claimed process for patent protection under §101, their claims must be
    CONSIDERED AS A WHOLE. It is inappropriate to dissect the claims into OLD and NEW
    elements and then to ignore the presence of the OLD elements in the analysis.”
    [ Emphasis added in caps ] Also, (MoT is regarded by the Court as an important
    and useful clue but not a requirement or test or any kind. )Please see
    Prometheus and Bilski on that.

    101, you constantly demonstrate that
    you do not understand integration.

     

  80. 207

    Hi Ned
    Heller,

    101 Integration Expert:

    Ned: If all the elements comprise eligible subject matter,
    an old combination certainly is eligible.

    101 Integration Expert: At 101 it does not matter if all the
    elements comprise eligible subject matter because the claims are considered as
    a whole. Please see Diehr: "The fact that one or more of the steps in
    respondents’ process may not, in isolation, be novel or independently eligible
    for patent protection is irrelevant to the question of whether the claims as a
    whole recite subject matter eligible for patent protection under §101. "

    101, it is possible that a claim be composed of only old elements.  The novelty would then be in the combination.  My point here is that if all the elements are eligible, the claims as a whole should as well.Also, you do not understand “claim as a whole.”  I constantly urge you to read 103 to get a clue.

     

     
     

  81. 206

    You keep investing in companies without patented products, and I’ll keep investing in companies with patented products. Good luck to you LOL.

  82. 204

    I might believe that if there were ANY kind of consistency to these decisions. But it looks like “clueless is okay” is the new slogan there.

  83. 203

    link to ipwatchdog.com

    “You should also know that it is virtually impossible in many cases to find products that are covered by a patent even when they do exist.”

    Why focus so much on patents when they aren’t important?

  84. 202

    Magical Thinking Cap

    Is that like his shiny aluminum helmet? the one he is buffing right now?

  85. 201

    Another Examiner: Don’t forget, though, that in Benson they held it was an attempt to claim a natural law.

  86. 199

    “I choose the word ANTHROPOMOPROHICATION ”

    LOL. What you’ve chosen ain’t any kind of word…

  87. 198

    MM: “why not be the first to come up with a claim that proves me wrong?”

    I debunked and discredited your theory at Jul 09, 2013 at 10:07 PM, and provided a claim that proved just how wrong and completely off you are, at Jul 09, 2013 at 10:26 PM. And in typical Malcolm Mooney MM fashion you pulled your Magical Thinking Cap over your eyes and ignored it. And you wonder why no takes you or your theory serious.

  88. 197

    Ned has been told over and over and over again (and yet spews his nonsense still):

      Bilksi: MoT not required
      Prometheus: MoT not sufficient

    Ned – why do you continue to ignore this vital point of law?

  89. 196

    Why are you making this unsubstantiated leap Ned?

    And what exactly is “software in the abstract?” Is that like thinking about software?

    Do you know how software even works? You are aware that “software in the abstract” cannot work, right? Abstract cannot have a functional relationship which is required by the exception to the printed matter doctrine (is that why you have NEVER recognized the controlling law that even Malcolm admits to?)

    Are you aware that software is equivalent to firmware and is equivalent to hardware?

    These are all machine components Ned – THAT is what the person having ordinary skill in the art recognizes. And not your claptrap philosophical desired meaning of software.

  90. 195

    information that is displayed

    Nice glib treatment of the controlling law of the exception to the printed matter doctrine.

    Notwithstanding that, the information could also very well be a rasterized image – oh wait – THAT controlling law is patent eligible, isn’t it?

    LOL – another Malcolm FAIL moment.

  91. 194

    Ned: If all the elements comprise eligible subject matter, an old combination certainly is eligible.

    101 Integration Expert: At 101 it does not matter if all the elements comprise eligible subject matter because the claims are considered as a whole. Please see Diehr: “The fact that one or more of the steps in respondents’ process may not, in isolation, be novel or independently eligible for patent protection is irrelevant to the question of whether the claims as a whole recite subject matter eligible for patent protection under §101. ”

    Ned: Regardless that the law of nature was new or old, it was not integrated into the old elements, the elements of passed MOT

    101 Integration Expert: Eligibility does not depend on whether a LoN is “integrated” into any individual elements, be they new, old, MoT or not. The Court looks to see if the LoN is integrated into the process as a whole. See: . “In determining the eligibility of respondents’ claimed process for patent protection under §101, their claims must be CONSIDERED AS A WHOLE. It is inappropriate to dissect the claims into OLD and NEW elements and then to ignore the presence of the OLD elements in the analysis.” [ Emphasis added in caps ] Also, (MoT is regarded by the Court as an important and useful clue but not a requirement or test or any kind. )Please see Prometheus and Bilski on that.

    Ned: Also in Diehr, the essential analysis there was that the allegedly ineligible subject matter, a computer program to calculate a particular mathematical formula on data collected from thermocouples in a mold, was integrated into the pre-existing molding process that was certainly patentable because it passed MOT.

    101 Integration Expert: In Diehr the alleged ineligible subject matter was the “Arrhenius equation”, not the software program or the computer. Please see Diehr: “Arrhenius’ equation is not patentable in isolation, but when a process for curing rubber is devised which incorporates in it a more efficient solution of the equation, that process is at the very least not barred at the threshold by §101.” And nothing is “certainly patentable” because it passes the MoT test. Prometheus claims passed the MoT and those claims were not even eligible, let alone patentable. Finally, the Court has never said, “Integration” is simply Machine or Transformation, as you like to imply. If that was the case Prometheus claims would have been considered “integrated” and therefore statutory, because they passed the MoT.

    Any Questions?

  92. 193

    Anon, but the software is independent of its form, is it not? If one is claiming software per se, one is not claiming software on an article of manufacture. One is claiming software in the abstract. As such it is neither a machine, article manufactured, or composition of matter.

     
    Sent from Windows Mail
     

  93. 192

    “You know where to find me.”

    The next time I’m in Columbia, I’ll stop by Dennis’s basement and say hello.

  94. 191

    If all the elements comprise eligible subject matter, an old combination certainly is eligible. 
     
    But, still take a look at Prometheus where everything in the claims was old except for the new information.  Regardless that the law of nature was new or old, it was not integrated into the old elements, the elements of passed MOT. The new information was not used to modify the old process in any fashion whatsoever. Rather the old process of simply use to gather data for input to the new correlation.
     
    Also in Diehr, the essential analysis there was that the allegedly ineligible subject matter, a computer program to calculate a particular mathematical formula on data collected from thermocouples in a mold, was integrated into the pre-existing molding process that was certainly patentable because it passed MOT.  The Supreme Court was unconcerned that the elements into which the allegedly novel mathematics was integrated where old.  So long as the ineligible subject matter was integrated into the old process, a process that passed MOT, it made no difference whether anything in the claim was new. Claim as a whole simply means that one must not view the ineligible subject matter out of contest. 
     

  95. 189

    The phrase Ned, is “fixed in a tangible medium.”

    What that means is that it is a manufacture.

    Perhaps now you will address a few points that you never seem to get around to addressing? Like anthropomorphication and the exceptions to the printed matter doctrine?

    LOL (I will not be holding my breath)

  96. 188

    With the very real difference that my questions for you happen in THIS world, while your question ONLY happens in your sick twisted mind.

    That happens to be a critical difference.

    (at least you left out the dead president and any 12 year old Chinese boys this time)

  97. 186

    Charles Manson writes points on patent blogs that highlight your bogus agendas too?

    Wow – I did not know that.

    Way to go Charlie!

  98. 185

    “Are you ready to talk about why all [oldstep]+[newthought] claims are ineligible yet?”

    That’s not the holding of Prometheus,

    Whether it’s the “holding” of Prometheus or not, it’s certainly true. Such claims were never legally enforceable before Prometheus, for basic logical reasons, but post-Prometheus there is absolutely no doubt about ineligibility of such claims.

    But hey, AAA JJ, why not be the first to come up with a claim that proves me wrong? You know where to find me. It’s been years now and nobody has come up with an eligible claim in that form that disproves the proposition. And nobody ever will, for very simple reasons.

    Go ahead. Make my day.

  99. 184

    Tell me Malcolm, who is having difficulty with the plain fact of WHO was right inthe Myriad case?

    What’s that? Can’t hear you. Speak up.

    Direct that.

  100. 183

    you have not answered my 12:22 question

    Right. I also haven’t called Charles Manson to wish him a happy birthday, for pretty much the same reason.

  101. 182

    You’re the one who seems to have difficulty with admitting certain relevant facts.

    LOL – the tired and stale gambit of Malcolm’s to accuse-others-of-that-which-he-does.

    Y A W N

    Tell me Malcolm, who is having difficulty with the plain fact of WHO was right inthe Myriad case?

    What’s that? Can’t hear you. Speak up.

  102. 181

    I explained the error and asked you to rebut the explanation with your ‘brilliant’ command of English as a first language.

      You refused and ran away.

    This is archived Malcolm. You had your chance and refused to take it. Now it is just another thing you will have to live with.

    Like your volunteered admission that you understood the controlling law on the exceptions to the printed matter doctrine.

    Like your volunteered admission that ‘programmed to’ is structural language.

    I LOVE when you attempt to actually address usbstantive points of law – your ability to immolate your pet theories is so very satisfying.

  103. 180

    Seems like plenty of things are eligible:

    adding old conventional elements to old conventional elements.

    having ineligible subject matter elements as part of a claim. (Malcolm, you NEVER did address the state of law that allows some mental steps in eligible claims – always trying to move the goalposts to claims COMPLETELY made up of mental steps).

    These two FACTS alone, are just the tinder to your own bonfire-setting actions when you FINALLY attempted to square the Prometheus case with the precedent case most on point. Even your vaunted English as a first language skills could not save you and you merely ran away.

    But hey, look on the bright side, I saved a marshmallow for you (but you will have to share it with Keeping It Real, Robert, Francis, Shrivan, Vivika M and the rest of your shattered psyche).

  104. 179

    adding an old conventional element to otherwise ineligible subject matter

    LOL – The Prometheus-Diehr squaring bonfire is burning bright.

    Mmmmmmm, toasty.

  105. 177

    LOL – the only one ‘pooing’ here is you and it is your puppy dog nose being rubbed in it.

    Tell me about Myriad. Out of the thousands of words from you, still haven’t seen you find the nuts to say the three most important ones: anon was right.

    It’s funny that you cannot bear to admit that very simple fact. Maybe it’s an English language thing.

    LOL

  106. 176

    Careful AAA JJ, – you will be accused of some dastardly thing like speaking English as a second language.

  107. 175

    LOL – still no answer – Gee what a surprise.

    And yet, he can lay down thousands of menaingless mewling words of QQ on something ‘that he doesn’t care about.’

    LOL.

  108. 174

    We recognize that in a combination claim

    Ned – your use is an abomination and a cannard.

    Please stop.

    Thanks.

  109. 173

    LOL – you misrepresent and miss the point.

    Gee, what a surprise.

    [shrug] and stand by.

  110. 172

    “Are you ready to talk about why all [oldstep]+[newthought] claims are ineligible yet?”

    That’s not the holding of Prometheus, despite how much you want it to be. And it’s never going to be the holding of Prometheus no matter how many times a day you post here.

  111. 171

    Where did I say or imply that?

    EG, can you admit that adding an old conventional element to otherwise ineligible subject matter is insufficient to generate an eligible claim?

    You seem to have great difficulty with that admission. Why?

    Software per se is ineligible subject matter, Erik. That’s not a controversial proposition. What’s the point of pretending otherwise? Have you instructed your clients to the contrary or failed to advise them of the law?

  112. 170

    “Computer code” per se is ineligible for patenting. It doesn’t matter what meaning a person or a computer can give to the claimed code. It’s still ineligible subject matter.

    And by the way, “code” doesn’t “generate” anything by itself. Machines and people can interpret code, provided they are properly modified or instructed, respectedly, with respect to the particular code that is used.

  113. 169

    EG, if software is not physical, it is not eligible subject matter, period. 
     
    You speak of B-2 bombers and such.   But what keeps the bomber flying is a flight control system, not software.  If you claim a flight control system that does XYZ, that certainly is eligible.  But at the same time software per se is neither machine, an article of manufacture or composition of matter and therefore is not eligible subject matter for patenting.  Functional software is part of a machine.  It does not exist except in context of a machine. 
     
    So, claim the machine, and do so in a way that is not simply a programmed general-purpose digital computer that does nothing more then calculate numbers from numbers.

     
     
     

  114. 168

    Anon, PON is a term of art that describes the new matter in a claim.  It is used in 103, just for example, because that statute requires us first to determine the differences between the claimed subject matter and the prior art.  That is exactly what the Supreme Court does in its 101 analysis as well.  PON is also pertinent in determining whether the claim claims the invention functionally.  If the new element claims the invention in terms of what it does rather than what it is, it is indefinite per the relevant Supreme Court cases.
     
     We recognize that in a combination claim, the novelty may lie in a combination of old elements, each one of which may be functionally claimed.  But that is generally not the case.

     
     
     

  115. 167

    I hear you, anon. I’m just perplexed by what Ned says about/infers from my posts, and am trying to get clarification so I can respond cogently.

  116. 166

    EG,

    Ned posts on behalf of third party interests and has no real desire to have an intellectually honest conversation about the law of 101.

    That is why he purposefully ignores or trainwrecks the conversations I attempt to have with him. That is why he fails to acknowledge the facts, and law as I have shown him. That is why he ignores the points made, retreats and then pops up later spewing his position once again that does not take into account the points raised against that position.

    It is all a merry-go-round for him and he cares not at all for genuine conversation (or the relevance of what others post, the relevance of facts, or the relevance of law).

  117. 165

    “Well, EG, I can only infer your understanding from your posts. From your posts you seem to think that adding nominal elements to the claims is sufficient.”

    “Infer your understanding” from what “posts” Ned? Also, where does this “adding nominal elements to the claims is sufficient” come from? Where did I say or imply that? These inferences you make from what I say appear to be your problem, not mine.

  118. 164

    I’m just a biochemist Ph.D. who has worked with computers and world-famous computer theorists for his entire adult life

    From your posts, you have not yet entered an ‘adult life’ Malcolm.

    Yes, we know you spent a bundle on the Ph.D. portion and that didn’t work out too well for you, so you decided to go into law. And that has not worked out too well for you either – seeing as you have an innate h@tred for obtaining property rights (goes against your socialist tendencies).

    You really need to get into something that you can believe in. The rot evident in your psyche should not be ignored.

  119. 163

    “You basically admit that software is not physical as it is neither a machine, article or composition.”

    Huh, what are you talking about Ned? Whether software is physical or not is irrelevant to whether it is statutory under 35 USC 101 as software is certainly “functional.” Try explaining to a B-2 pilot that software (which basically keeps the B-2 from crashing) isn’t functional. Also, software can certainly be embodied in/on an article of manufacturer (e.g., CD) or a machine (e.g., computer). Let’s focus on what is relevant, not what is irrelevant, to statutory subject matter under 35 USC 101.

  120. 158

    101, The SC in Prometheus clearly were of the view that the LoN, newly discovered, was not integrated into the old, conventional elements that passed the MOT to modify those steps.  The LoN was tagged on, or better, the conventional steps were tagged on. 
     
    You can save you breadth trying to explain away Prometheus.  It will not work.

     
     

  121. 157

    Ned, you are wrong. There is no point of novelty test or analysis per se in the Prometheus decision. What appears to be overlapping 102 is actually part of the integration analysis of the claims as a whole. Novelty, 102, remains a separate category, as Judge Rich designed it to be in 1952. Since Prometheus has a “manifest” law of nature ( LoN ) in it’s process the Court considered the claims as an ordered combination, to see if there was anything added that was different than the law of nature itself. The combination added nothing new, so in practical effect the claim was to the law of nature (1). Had the LoN, along with additional steps, presented a “new” combination then the claims would be considered “integrated” as was the case in Diehr. This would be correct even if all the individual steps/elements in the combination were well known and in common use, before the combination was put together, A.K.A being non novel as in 102. The key is to consider the claims as a whole A.K.A. “Integrated” in the concluding analysis. As the Prometheus Court held, 9-0, integrated claims transform a process into an inventive application of a formula (2) . This of course applies to all three of the limited Judicial Exceptions when such are manifestations in a claim. This is why you and MM fail so miserably in advancing your agenda’s. MM with his various test for ignoring mental steps , and you with your “point of novelty canard”, as anon would say (3) . The doctrine of Integration is controlling law and trumps you all.

    Citations

    (1) ” Fourth, to consider the three steps as an ordered combi­nation adds nothing to the laws of nature that is not al­ ready present when the steps are considered separately. See Diehr, supra, at 188 (“[A] new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made”).”

    (2) “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).

    (3.) “The Government, however, suggests in effect that the novelty of a component law of nature may be disregarded when evaluating the novelty of the whole. See Brief for United States as Amicus Curiae 27. But §§102 and 103 say nothing about treating laws of nature as if they were part of the prior art when applying those sections. Cf. Diehr, 450 U. S., at 188 (patent claims “must be consid­ered as a whole”).”

  122. 156

    Since software is an integrated technological process some of these decisions should be reviewed in light of the doctrine of Integration.

  123. 155

    Well, EG, I can only infer your understanding from your posts.  From your posts you seem to think that adding nominal elements to the claims is sufficient.

     
    Sent from Windows Mail
     

  124. 154

    EG,  this is an answer that is not an answer.  You basically admit that software is not physical as it is neither a machine, article or composition.

     
    Sent from Windows Mail
     

  125. 153

    6 – you might want to update your ‘etiquette guidelines’ to the modern day and to the subject of law.

    And even then, how many other regular posters here apply your guidelines?

    Me? Give me a bit more brusqueness but some intellectual honesty and the proper ethics of recognizing controlling law over your ‘guidelines.’

    When a point in law is made – don’t ignore it and post the very same claptrap as if that point did not exist. You fool know one and you only appear to be a shill, an @$$, or both.

  126. 152

    Claim 1 might be, if its not obvious in view of the adage regarding the infinite number of monkeys, infinite number of typewriters (that’s how old the adage is) and infinite amount of time.

    Additionally, I think there would need to be some pretty good explanation about how comparing the generated program to metric values would allow one to determine the program is capable of performing desired tasks.

    Claim 2 would probably run up against the “software per se” issue and be rejected.

    Try putting the program of claim 1 on a non-transitory computer readable medium… that might still work.

  127. 151

    “Because there are no answers provided.”

    No “answers” have ever been provided to which questions anon? Because I recall answers having been given time and again until people tired of it. Even so, go ahead, get it all out of your system, write all your questions down and I’ll answer, with a good faith answer, on behalf of MM, Ned, and all the rest you constantly want an “answer” from. And this I will do on only one condition, if you will agree to let the matter drop after the answer to your question is provided in good faith. Sound OK?

    Or are you asking for an “inclusion in their narrative” “answer” as opposed to an answer to a question?

    I’m also pretty sure that you need to read some rules of etiquette brosef.

    link to artofmanliness.com

    See no. 30 for why many don’t “answer” your questions all the time.

    See also no. 2 regarding the putting of their “puppy noses” into it.

    I have yet to find any rules in that link or elsewhere as to etiquette “demanding” that answers (of any sort) be necessarily forthcoming. Indeed, it seems quite the opposite where there exists the prospect of conflict, which is certainly the case here.

    In fact, see no. 1 regarding your “not dropping the matter”.

    Even though etiquette is actually the opposite that which you were apparently taught at band camp by some nerd that was socially inept, I will still agree to go ahead and answer your questions this once. Make it good, because this should do you for awhile in light of your newfound knowledge of etiquette agreed?

  128. 150

    LOL – there you go again Malcolm, ploying that feigned and projected ignorance gambit again.

    Funny – the Court in Myriad had no trouble with my ‘English as a second language’ and yet, 21,000 words of vacuous QQ from you, you STILL have not been able to express the critiical words (that take only three such words: anon was right.

    Can’t find the nuts, can you?

  129. 149

    Is this software claim patentable?

    I claim,

    1. Computer code comprising: computer code which generates a program by randomly determining to, add a 0 or 1, or remove a 0 or 1, or change the value of a 0 or 1;
    comparing the generated program to metric values to determine the program is capable of performing desired tasks;
    if the program is not capable of performing the desired tasks based on the metric values, then repeating the steps of determining and comparing, wherein the program’s desired task is not farm inventory.

    2. The program generated claim 1.

  130. 148

    LOL – Ned cautioning others on whether they understand the law of 101.

    After the beatdowns I have given him on Bilksi and Myriad, he has a lot of moxie.

  131. 147

    Actually INANE, the Supreme Court (in Chakrabarty) said exactly the same thing, and they ARE the highest court in the land.

    Once again, you are trying way too hard to be a smart-@$$ without the smart.

  132. 146

    And it doesn’t matter which one software is in, as long as it is in one of these statutory classes and the Federal Circuit has said as much.

    And since the Federal Circuit is the highest court in the land, case closed.

  133. 145

    Ned,

    I understand the case law on 101 issues well enough, and it also isn’t clear to what “post” of mine you’re referring to. In what way have I suggested by what I’ve posted that “simply reciting machine, article manufacture, or composition as nominal subject matter to a claim to otherwise ineligible subject matter is not sufficient”?

  134. 144

    “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?”

    Ned,

    Your letting form get in the way of substance on the 101 issue. The point is that software could be in any of these statutory classes. And it doesn’t matter which one software is in, as long as it is in one of these statutory classes and the Federal Circuit has said as much.

  135. 143

    Why will you not accept the answers provided in good faith and drop the matter?

    Because there are no answers provided.

    I won’t drop the matter (because of ‘etiquette,’ because etiquette actually demands that the answers (intellectually honest answers) be forthcoming. WHen those answers are forthcoming, and one can see the repeated ad nauseum ad infinitum CRP is nothing but CRP, then we can move ahead with serious discussion.

    Until then, the CRP will be called out for what it is and those dropping such CRP will have their puppy dog noses rubbed into it.

    Don’t like it? I have posted many many many times that you have control over that – stop posting CRP.

    It’s that simple.

  136. 142

    I know anon, but I’ve answered them ad infinitum, and I’m not obliged, nor should you attempt to oblige me in any discussion to necessarily have me or anyone else “answer your questions” or “include your views” in their own. It’s called having a bit of etiquette. Just a mote of etiquette.

    Why will you not accept the answers provided in good faith and drop the matter? Are you insane, just a ta rd, or do you expect that you make yourself out to be a bigger man by constantly annoying other people of differing views? Is it that important to you that other people hear your “pet theories” along with everyone else’s every single day and week or alongside anytime others want to provide their views?

  137. 141

    >
    > Diehr claims:
    > “11. A method of manufacturing precision molded articles from selected
    > synthetic rubber compounds in an openable rubber molding press having
    > at least one heated precision mold, comprising:”
    > OLD STEP: “(a) heating said mold to a temperature range approximating
    > a predetermined rubber curing temperature,”
    > OLD STEP:   “(b) installing prepared unmolded synthetic rubber of a
    > known compound in a molding cavity of predetermined geometry as
    > defined by said mold,”
    > OLD STEP: “(c) closing said press to mold said rubber to occupy said
    > cavity in conformance with the contour of said mold and to cure said
    > rubber by transfer of heat thereto from said mold,”
    > OLD STEP: “(d) initiating an interval timer upon the closure of said
    > press for monitoring the elapsed time of said closure,”
    > OLD STEP: “(e) heating said mold during said closure to maintain the
    > temperature thereof within said range approximating said rubber curing
    > temperature,”
    > OLD STEP: “(f) constantly determining the temperature of said mold at
    > a location closely adjacent said cavity thereof throughout closure of
    > said press,”
    > OLD STEP + NEW THOUGHT: “(g) repetitively calculating at frequent
    > periodic intervals throughout closure of said press the Arrhenius
    > equation for reaction time of said rubber to determine total required
    > cure time v as follows:” “ln v = cz + x” “wherein c is an activation
    > energy constant determined for said rubber being molded and cured in
    > said press, z is the temperature of said mold at the time of each
    > calculation of said Arrhenius equation, and x is a constant which is a
    > function of said predetermined geometry of said mold,” “(h) for each
    > repetition of calculation of said Arrhenius equation herein, comparing
    > the resultant calculated total required cure time with the monitored
    > elapsed time measured by said interval timer,”
    > OLD STEP + NEW THOUGHT: “(i) opening said press when a said comparison
    > of calculated total required cure time and monitored elapsed time
    > indicates equivalence, and”
    >
    > OLD STEP: “(j) removing from said mold the resultant precision molded
    > and cured rubber article.”
    >
    > The above combination of old steps and new thoughts are “integrated”
    > and thus were found to be patent eligible by the Supreme Court.
    > Therefore your assertion, that It’s the law [ALL] claims in the form
    > [oldstep]+[newthought] are ineligible under 101, is incorrect.
    >
    > Any Questions?

  138. 140

    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.

  139. 139

    >
    > 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?

  140. 138

    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.

  141. 137

    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.

  142. 135

    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).

  143. 132

    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.

  144. 131

    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?

  145. 130

    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?

  146. 129

    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?

  147. 128

    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.

  148. 127

    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.

     
     

  149. 126

    “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.)

  150. 125

    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?

  151. 124

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

    Fixed.

  152. 123

    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.

  153. 122

    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.

  154. 121

    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.

  155. 120

    “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.

  156. 119

    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?

  157. 118

    “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.

  158. 117

    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.

  159. 115

    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.

  160. 114

    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.

  161. 113

    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.

  162. 112

    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.

  163. 111

    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.

  164. 110

    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.

  165. 108

    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.

  166. 107

    And what data is stored therein?

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

  167. 106

    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.

  168. 105

    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.

  169. 104

    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.

  170. 103

    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.

  171. 102

    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.

  172. 100

    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.

  173. 99

    “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.

  174. 98

    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…

  175. 97

    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.

  176. 96

    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.

  177. 95

    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.”

  178. 94

    “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.

  179. 93

    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?

  180. 92

    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?

  181. 91

    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.

  182. 90

    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.

  183. 89

    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?

  184. 88

    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.

  185. 87

    Anon,

    Thanks, even moi, a chemistry major, understood that, but Malcolm, the biotech guy, does not.

  186. 85

    Software is equivalent to firmware is equivalent to hardware.

    What part of this confuses you Malcolm?

  187. 84

    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?

  188. 83

    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.

  189. 82

    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.

  190. 81

    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.

  191. 80

    You are still clueless 6.

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

  192. 78

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

    Those with a modicum of intellectual honesty want to know.

  193. 77

    Vibrations…?

    Vibrations of what exactly?

    You are well on over your head on this stuff Malcolm.

  194. 76

    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).

  195. 75

    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.

  196. 74

    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 !

  197. 73

    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.

  198. 72

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

    Weirdest. Blogtroll. Ever.

  199. 71

    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)

  200. 70

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

    Exactly what “proposition” are you referring to?

  201. 69

    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.

  202. 68

    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.”

  203. 67

    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.

  204. 66

    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.

  205. 65

    how is software different from hardware

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

  206. 64

    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.

  207. 62

    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.

  208. 61

    “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.

  209. 59

    “:. 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.

  210. 58

    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).

  211. 57

    “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.

  212. 56

    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”.

  213. 55

    “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.

  214. 53

    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.

  215. 52

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

  216. 51

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

  217. 50

    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.

  218. 49

    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?

  219. 48

    “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.

  220. 47

    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.

  221. 45

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

  222. 44

    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.

  223. 43

    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.

  224. 42

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

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

  225. 41

    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.

  226. 40

    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.

  227. 39

    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).

  228. 38

    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.

  229. 37

    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.

  230. 35

    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

  231. 33

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

    Manufacture.

  232. 31

    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.

  233. 30

    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.

  234. 29

    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”

  235. 27

    “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).

  236. 25

    “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.

  237. 24

    “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.

  238. 23

    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.

  239. 22

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

  240. 21

    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.

  241. 20

    mental steps

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

      ANTHROPOMORPHICATION
  242. 19

    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.

  243. 18

    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.

  244. 17

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

  245. 16

    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)

  246. 14

    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?

  247. 13

    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.

  248. 12

    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.

  249. 11

    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.

  250. 10

    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.

  251. 9

    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.

  252. 8

    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.

  253. 6

    “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?

  254. 5

    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”)?

  255. 4

    “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.

  256. 3

    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?

  257. 2

    “…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?

  258. 1

    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)

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