Gone Fishing: 25 year old patent application rejected again

By Dennis Crouch

In re Rudy (Fed. Cir. 2014)

Back in 1988, Christopher Rudy filed a patent application for a fishing hook that is both colored and translucent. An illustrative pending claim is as follows:

21. In an article of manufacture, which is a fishing hook, which is disintegrated from but is otherwise connectable to a fishing lure or other tackle and has a shaft portion, a bend portion connected to the shaft portion, and a barb or point at the terminus of the bend portion, thus itself not being a fishing lure to include a fishing lure in imitation of an insect or part of an insect to include an insect body, and which is made of suitable material, the improvement comprising where the hook is made of a suitable material, which permits transmittance of light therethrough and is colored a color, selected from the group consisting of red, orange, yellow, green, blue and purple, in nature.

In reading the claims, you might think that this is an abstract idea case since the invention is based upon the law of nature or abstract idea that the translucence and color of a fishing hook correlate with a fish’s proclivity to bite and, although the patent does claim a physical hook, that application merely uses well known technology in a way that basically occupies the same space as the abstraction itself. 

 

However, the PTO rejected the claim under 35 U.S.C. § 103 as obvious in light of the prior art. The prior art apparently teaches transparent fishing hooks as well as fishing hooks that are both translucent and colored but that are shaped like insects. Although neither of those references teach all of the elements of the claim, the USPTO found that it would have been obvious back in 1988 to combine the references to form Rudy’s invention. Rudy submitted a number of affidavits explaining the invention’s importance. However, the USPTO found those statements from the inventor and his “friends and family” to be insufficiently anecdotal to overcome the rejection. On appeal, the Federal Circuit has affirmed the rejection without opinion.

The only interesting part of the oral arguments came when the court asked the USPTO to explain why the case was still alive and pending after 26 years. The USPTO placed full blame on Mr. Rudy. Explaining that “Mr. Rudy is a very zealous advocate on his own behalf.” In particular, during this time Mr. Rudy has apparently filed thirteen amendments to the claims; seven petitions; eight extensions of time; twenty nine miscellaneous letters; enjoyed three appeals; and has abandoned his action only to later revive it to be considered again.

On remand, I expect that Rudy will amend his claims and try again.

149 thoughts on “Gone Fishing: 25 year old patent application rejected again

    1. The bizarre formatting broke the comment itself. I’m asking about

      >

      <

      And

      ** as symbols used in the MPEP.

      Why are they just randomly in there?

        1. Don’t pick on him. At least he opened the damn thing. Even if it is apparently for the first time.

          6 – I often wonder the same thing. I think they are to show changes. I also think that they are left in accidentally of via laziness. Someone gives final approval to a marked up draft, and no one bothers to remove the mark ups.

          But, that is just my guess.

          1. “Even if it is apparently for the first time.”

            Nah I’ve been wondering why they used that horrendous formatting, for the last 6+ years. But if you’re thinking that they’re used to show changes, do you mean since the last version? Because man, that would be a lot of changes.

            “I also think that they are left in accidentally of via laziness”

            Now that I would believe.

            1. PTU says there are blue pages that ‘splain the markings (see his post below). I think he is correct. I now recall seeing some sort of unintelligible explanation.

              I believe they should be left out. They make an already self contradictory, difficult to read, document, that much more difficult to read and quote document.

              The section on restriction requirement being one of the worst.

            2. “I believe they should be left out. They make an already self contradictory, difficult to read, document, that much more difficult to read and quote document.”

              Indeed so. And back 5+ years ago when I was telling the higher ups to go ahead with a project like the empep (I’m sure I wasn’t the only one bringing that to their attention though) I explicitly noted that such garbage should be left out. But apparently they still think its important to make your document look like it was written by a 5 year old.

    2. Those are indications of revisions since the last version. The Blue Page explains them as such:

      “Sections of the Manual that have been changed by this revision are indicated by “[R-9]” after the section title. Additions to the text of the Manual are indicated by arrows (><) inserted in the text. Deletions are indicated by a single asterisk (*) where a single word was deleted and by two asterisks (**) where more than one word was deleted. The use of three or five asterisks in the body of the laws and rules indicates a portion of the law or rule that was not reproduced."

      1. ““Sections of the Manual that have been changed by this revision are indicated by “[R-9]” after the section title. Additions to the text of the Manual are indicated by arrows (><) inserted in the text. Deletions are indicated by a single asterisk (*) where a single word was deleted and by two asterisks (**) where more than one word was deleted. The use of three or five asterisks in the body of the laws and rules indicates a portion of the law or rule that was not reproduced.""

        Oh gotcha. Man that's kind of dumb to have that in the EMPEP. If we want to see the "revised version" then there should be a box to check.

  1. You’ve just got to love the underdog … ‘specially when his name is Rudy:

    link to en.wikipedia.org

    As Rudy Ruettiger finally realized his dream of playing for Notre Dame … inventor Rudy will one day fulfill his patent dream …

    1. Nah, why not allow him to file an prosecute a continuation and not point out to him that any patent he receives will be expired on the date of grant. Rudy may not be smart enough to figure that one out.

  2. “A method for a player to render a harmonic chime on a stringed instrument that has a neck, a bridge, and at least one string, wherein the player has a string-stopping hand that can shorten a playable length of the at least one string plus a string-picking hand with a plurality of digits including a thumb and fingers, the thumb and a finger of which can hold, or the thumb itself able to have mounted thereon, a first pick, which comprises: providing the stringed instrument; holding by the thumb and finger of the string-picking hand, or mounting on the thumb of the string-picking hand, the first pick; and touching a second pick mounted on another finger of the string-picking hand, or touching another finger of the string-picking hand not having a pick, to a harmonic-rendering node position of the at least one string, and plucking the at least one string between the bridge and the harmonic-rendering node position with the first pick to provide the harmonic chime.”

    I bet anon is just loving that claim. It’s a government certified “innovation”. Presumed valid you know.

    Now the accordion example isn’t so far fetched. Just recite the new way of playing it. Or, heck, just recite the new “configuration” that occurs when you’re playing it.

    1. You realize of course 6 that the claim is not to music (or fine arts) itself, right?

      Or did Class 084 vanish…?

      /facepalm

      1. the claim is not to music (or fine arts) itself

        Right. It’s a method of healing weary souls.

        LOL! The patent teabaggers will defend everything, everytime. Too funny.

      2. to be clear I was referencing the Malcolm claim (an instrument) and not the 6′ abbreviation that moved the goalpost to be a method claim in my comment concerning the class of musical instruments.

        1. to be clear I was referencing the Malcolm claim (an instrument)

          I don’t know what you are referrring to. I referenced no claim to a musical instrument. This claim from Rudy’s “harmonics” patent

          15. An article of manufacture comprising a tangible medium of expression in or on which a harmonic chime tone is recorded, which is rendered by a method for a player to render a harmonic comprising blah blah blah

          is to a tangible medium comprising a “new” sound recording, not a musical instrument. If you look at the PDF of his patent, he’s even got hand-drawn pictures of the various tangible mediums. It’s pretty funny.

            1. Nobody is arguing that claims to new musical instruments should not be eligible for patenting. You can consider letting that issue go, as your incessant beating on it makes you look confused.

              We’re talking about (1) methods of putting ones fingers on old instruments to make music; and (2) recordings of sounds made by (1).

              Try to keep up. Go ahead and make your best arguments for the patent-worthiness of (1) and (2). Imagine you are trying to justify such claims to a group of talented musicians who have little love for patent law. You know, the sorts of people who don’t spend all year looking forward to eating steak with Big Gene at the American Super Patriot Inventors Conference.

            2. Not necessary Malcolm.

              Music is not within the useful arts – as I have so often reminded people (including you) that attempt to fallaciously create bogus arguments with such uses of music (or for that matter, mere words that do not meet the exceptions to the judicial doctrine of printed matter).

              Since we both know that you have admitted to knowing that controlling law, ‘confused’ is not the proper description for your action, but rather, ‘dissembling’ is the proper description.

              Can you keep up with that? Or are you still going to run away from the simple questions that go to the heart of the software as eligible patent subject matter?

            3. Music is not within the useful arts – as I have so often reminded people

              LOL.

              Bow down, everybody. Patent Jeebus is here to construe 101 and tell you what the words really mean. But this is nothing like how the Supreme Court construes 101. Nope. Totally different. You can trust him.

            4. “Music is not within the useful arts – as I have so often reminded people (including you) that attempt to fallaciously create bogus arguments with such uses of music (or for that matter, mere words that do not meet the exceptions to the judicial doctrine of printed matter).”

              But the claim is government certified! It’s presumed valid! BY LAW! HUR! HUR!

            5. This is directly from the Constitution.

              Exactly “what” is “directly from the Constitution”? The prohibition on patents to useful recordings of audible sound waves and/or methods of producing such using old articles of manufacture? Or was there something else you have in mind?

              Let everyone know, and please show us the super clear text that supports your interpretation, oh Sooper Dooper Principled Scholar Who Would Never, Ever Go Beyond the Text of Anything For Any Reason.

            1. “/facepalm – so THINK 6 – think.”

              K, I’m thinking. Still not understanding what having a subclass for instruments has to do with this claim that is claiming a method of playing some generic instrument.

            2. “(sigh)

              6, see 11.1.2″

              Ok fine, you were referencing a different claim or something that MM brought up not what I brought up (aka a method). Fine.

              At some point do you want to discuss the method that I brought up or not?

          1. “If you look at the PDF of his patent, he’s even got hand-drawn pictures of the various tangible mediums”

            Omg this is going to be amazing!

      3. Anon, you and I are on the same page that claims such as Rudy’s are not abstract, and the objection, if any, is that the claims is claiming something not within the useful Arts.

        We are reminded here of our numerous conversations about the player piano or for that matter a flute or other musical instrument playing the new music or song or sound is that the subject matter, music, is not within the useful arts. The piano, flute or music instrument itself is old.

        The Supreme Court seems adamant to avoid the discussion of subject matter within or without the useful Arts. Until they go there, they are going to have to invent artful dodges that make no sense whatsoever and which have no basis in law.

        1. Anon, you and I are on the same page that claims such as Rudy’s are not abstract, and the objection, if any, is that the claims is claiming something not within the useful Arts.

          Ned, you and anon can’t be “on the same page” about the issue of “useful arts” without anon turning into a giant hypocrite.

          Making music is certainly “useful” to people, and so are recordings of that music (pretty much every musician records music for the purpose of re-playing it back — it’s an aid to learning). If Congress wanted to say otherwise, they could have written that into the statute. It’s not for the courts to get all power-grabby and decide what is and is not included within the term “useful art.” ” <—- not my argument, but it is the exact same argument anon and other faux-"principled" proponents of a de-fanged 101 make to justify their views

          The Supreme Court seems adamant to avoid the discussion of subject matter within or without the useful Arts.

          All that’s needed is for the proper claims to be brought before them by lawyers willing to make the necessary arguments. Get anon and Hricik to make the argument that recordings of music, used by musicians as learning aids, are certainly “useful” and it’s not the Supreme Court’s job to tell everyone else anything different unless the Supreme Court is just a power-hungry wax nose twister or whatever the rhetoric is.

          I think they’d love to participate. I think they’d also lose in a magnificent fashion but that’s beside the point, isn’t it? I mean this isn’t about the public’s interest in a functional patent system. It’s about respecting the Founders. And by that I mean Van Halen.

          1. Malcolm, clearly you do not understand what the Useful Arts means (as opposed to the fine arts).

            There is no hypocrisy in understanding (and applying) this concept.

            This is not a Congress/Court law writing battle (as you would dissemble).

            Pull your head out of the sand.

            1. Shorter anon: clearly you do not understand what the Useful Arts means

              LOL. Try to recall, bozo, that I’m the one who identified the junk claim to recorded music comprising any of ten zillion different harmonics.

              You’re the one who couldn’t even read the claim without putting your foot in your mouth. Apparently the term “tangible medium” made your brain stop working.

              This is not a Congress/Court law writing battle

              I’m pretty sure this “battle” you refer to takes place every time a statute is construed by a court and the court’s construction includes words not in the statute and someone disagrees with the construction. You choose to pretend that the question of what is and is not within the “Useful Arts” is crystal clear only because it suits you to do so.

              Do you want to talk about “new” methods of using old machines (e.g., a pocket calculator) to calculate a number? Useful Arts or not? Does it matter if we give the number a fancy sounding label like “price of dog food”, or can we just describe the manner in which the numbers are manipulated on the calculator? What does the statute say?

              How about a method of achieving improved relaxation by plucking certain strings on an old instrument in a certain order? Are methods of achieving improved relaxation in the Useful Arts or not? What does the statute say about that? Does it say that drugs and massage methods are okay for achieving improved relaxation but music-making methods aren’t okay? Show me where.

            2. The term “tangible medium” was clearly secondary to the term “article of manufacture.”

              And what you are “pretty sure of” is dead wrong. The Useful Arts is not being construed through the statute. PAY ATTENTION: the term is in the Constitution.

              LOL – You do not even understand where to look.

            3. The Useful Arts is not being construed through the statute. PAY ATTENTION: the term is in the Constitution.

              Okay, if you want to rely on the Constitution that’s fine with me.

              So how about “new” methods of using old machines (e.g., a pocket calculator) to calculate a number? Useful Arts or not? Does it matter if we give the number a fancy sounding label like “price of dog food”, or can we just describe the manner in which the numbers are manipulated on the calculator? What does the Constitution say?

              How about a method of achieving improved relaxation by plucking certain strings on an old instrument in a certain order? Are methods of achieving improved relaxation in the Useful Arts or not? What does the Constitution say about that? Does it say that drugs and massage methods are okay for achieving improved relaxation but music-making methods aren’t okay? Show me where.

          2. MM, first you an I agree that a process of using an old apparatus comprising a series of states of that old apparatus should not be claimable as a machine as there is no new machine. Section 100 supports this view, declaring the new use of a an old machine is a process.

            Thus we have a claim comprising using a computer to do X, Y and Z steps; a flute that plays X, Y and Z notes, any apparatus that has a specific configuration that produces function F. All are not new apparatus.

            So, is playing a flute in a specific way eligible? It certain might be new and useful, but is it within the useful Arts?

            1. So, is playing a flute in a specific way eligible? It certain might be new and useful, but is it within the useful Arts?

              I would say “of course it isn’t” because patents weren’t intended to “promote progress” in new music, they are unnecessary for that goal, and they are either incapable of achieving that goal or they are a hindrance towards achieving that goal

              And because Kevin Noonan surely wants to know: my answer does not change if this “particular way of playing the flute” cures cancer in children.

              Maybe next we should discuss what “promoting progress” means in the patent context. From whose perspective is “progress” determined? The patentee? Or the public?

            2. Malcolm,

              Once again you are lost and clueless.

              It is clearly a system NOT to the benefit of one over the other – it is a balance, as captured in the Quid Pro Quo.

              Wake up son.

            3. Note how you slide back into a fallacy of “but-for” and “need to” – “they are unnecessary for” is simply a mistaken view of why the patent system exists. It has never been a Must have system – it has always been a “let’s invite more and faster” system.

              You are so often wrong in our discussions because you just don’t have the basics right.

            4. “Promoting progress.”

              Excellent point there. This is also the gravamen of argument advanced by CLS Bank, that claims covering fundamental economic principles cause more damage than any invention they incent. The value of the contribution is almost non existent in comparison to the restraint on commerce.

              Others have pointed out that free market competition is the policy of the US and that allowing patents on economic principles conflicts with THAT policy.

              The Court may indeed declare business method patents antithetical to fundamental policies of free competition. Thus, Congress could never have deem patents in this area the kind of patent it would authorize.

            5. Ned,

              Once again you run into the item you cannot run away from: how does the ‘old box’ – without changing and adding the machine component and manufacture in its own right of software change to have the capability of something, a characteristic, that it did not have before? This is a VERY simple question, and yet one no one wants to answer. No one from the anti-software patent crowd, that is.

              This question is directly tied to several things that you find ‘annoying.’ – Mainly it appears that you are annoyed because I refuse to let you slide away from giving answers to these simple – but critical points, and you do not give answers because you have no answers in your world view.

              First there was the Grand Hall experiment.

              Then there was that experiment brought to life in the Nazomi case.

              Then there was the clear discussion on the ITC thread (machine as staple item imported, but changed with software after import and thus then infringing).

              The plain and simple fact of all of this is that I have always been right in understanding the law (See Alappat, understand the exceptions to the printed matter doctrine).

              Face it – to continue to hold to your view would mean that the ‘oldbox’ would necessarily already inherently have all future inventions – even those not yet created – already ‘in there.’ That is precisely the fallacy of the “House” argument – the first – and only the very first – computer should have a patent, and that very first computer somehow inherently contains all future computer improvements. That is exactly what you cannot have per Morse.

            6. Thus, Congress could never have deem patents in this area the kind of patent it would authorize.

              Again Ned – except for the FACT that Congress expressly did deem patents in this area to be the kind of patent it DID authorize.

            7. “The plain and simple fact of all of this is that I have always been right in understanding the law (See Alappat, understand the exceptions to the printed matter doctrine).”

              Even if it were so, what you don’t seem to understand mr. re re is that nobody cares about you, or your “correct understanding of the lawl”.

            8. Another glorious 6 character suicide…

              Sorry 6 – you are wrong yet again.

              Those that care about the law will care about my poss.

              Those that only care about the lawl – or the “subjective in the head make up whatever you want to post” thing that you often think is the law – yeah, no one really cares about that.

            9. “Those that only care about the lawl – or the “subjective in the head make up whatever you want to post” thing that you often think is the law – yeah, no one really cares about that.”

              Tell it to Mr. Bilski. Tell it to Mayo. Tell it to X person that just had his sht go down under 101 Benson style.

              And tell it to Alice 1 year from now.

        2. Anon, you and I are on the same page

          And Ned, let me share a little hint that might help you understand the constant losses you suffer in your anti-business method crusade.

          The battle there in the “anti-business method” crusade is likewise not actually in the category aspect of 101.

          There too, the proper facet to use is the utility aspect of 101.

          And that is why the only way you can even attempt to gain traction is to redefine (for yourself) what “business methods” means, always trying to fit a square peg into a round hole, complaining that “the Court has not defined things” when in truth, it is not up to the Court to so define things.

          The problem you have – due to your belief system – is that you refuse to even see the issue as one of utility instead of as one of category. It is easy to see why you resist the utility aspect view. The utility is undeniable. The entire purpose of modern socisty is exrpressed EITHER in business or pleasure – in the Useful Arts or the Fine Arts. As I explained, simple set theory is all you need to know to understand the Useful Arts. Accepting this then you would recognize that clearly business is within the Useful Arts (as it is undeniable that it has utility).

          What is comical is 6’s attempt to portray a lack of business in his literature search and simply proving himself (and the anti-business method contingent) wrong. He displays the vapid examiner characteristic of looking for a mere key word, not realizing that ALL the categories he did find engage in business.

          He does not recognize that “business methods” is just one rung up the ladder and describes business methods “doing business” – and this “doing business” is in each, any and possibly all of the lower rung items. You cannot ‘get rid of’ business methods without getting rid of the patent system itself.

          A second cause of confusion – and one you are more prone to – is the old school sense that method patents are a sub-tier category to the ‘hard goods’ category. You (personally and the Royal You) glom onto the word ‘method’ as if the problem is some ‘method’ aspect. That is why there is so much confusion and aim for a 101 category aspect resolution. The problem you have is that the process (method) category simply is NOT a sub-tier category. Thus, if you recall, I chastised you heavily with the banter of medical method patents being ruled ineligible after Prometheus, as that was a medical methods case. Did all medical methods disappear after Prometheus? According to your world view, they should have! You refused to see the connection and draw the distinction away from the issues being one of method patents, when what you were really trying to do was attack business patents.

          As Prof. Crouch and I have tried to educate, the business of business has matured into a science – and an applied science called engineering – of its own. So in addition to being a pervasive aspect of any of the trades of lore, it is a science, an engineering and a patent art field in its own right.

          Patent law – written to be forward-looking embraces this evolution.

          If you seek peace in your soul and understanding of the law, so too, must you embrace this evolution – and be open for more, as no one can tell where next innovation will blossom. That is its nature.

          1. anon, I am, as you are, concerned for the statutory or constitutional basis for excluding “fundamental economic principles.” I concede that as claimed, the claims in this case, all of them, are neither abstract, nor failing in utility. Thus, nominally, they are statutory.

            The Supreme Court has to justify Bilski from a legal point of view. They simply announced the Bilski claims abstract, when clearly they were not abstract. Excluded? Perhaps. But they disavowed exclusion as the basis of their holding.

            So, Bilski remains inexplicable, legally. At the bottom line, it was a simple announcement that the claims were abstract. That kind of “reasoning” is bogus, and has lead to years of subsequent confusion.

            1. And that Ned – is the fault of a 101 nose of wax addicted Supreme Court which refuses to curb its addiction and bide by the explicit words used by Congress – the branch of the government duly sanctioned by the Constitution to have authority to write patent laws.

            2. “anon, I am, as you are, concerned for the statutory or constitutional basis for excluding “fundamental economic principles.” I concede that as claimed, the claims in this case, all of them, are neither abstract, nor failing in utility. Thus, nominally, they are statutory.

              The Supreme Court has to justify Bilski from a legal point of view. They simply announced the Bilski claims abstract, when clearly they were not abstract. Excluded? Perhaps. But they disavowed exclusion as the basis of their holding.

              So, Bilski remains inexplicable, legally. At the bottom line, it was a simple announcement that the claims were abstract. That kind of “reasoning” is bogus, and has lead to years of subsequent confusion.”

              Jebus Ned, you a flip flopper for sure. Not just the other day I had got you edumacated on what they meant in Bilski and you were all like “oh ok, that makes sense and is fine”. Now you’re all “but but but that doesn’t make sense and is so terrible wah wah wah”!

            3. Repeated here for convenience:

              Ned,

              See my comments (both now and in the archives) admonishing you for your outdated view of “process” as some sort of second class statutory category as noted in the Tarcsy-Hornoch case that you cite to.

              “The expression “function of an apparatus”is our legacy of 19th century controversy over the patentability of processes. Early cases proscribed a kind of overweening claim… ”

              Note too, that your penchant for old and outdated patent academic articles omits this understanding.

              Thus, it can be seen that if you attempt to achieve clarity in understanding the law of 101, that one must be aware of two different aspects: the aspect of statutory category and the aspect of utility.

              It is time to put the crusade against business method patents to rest.

          2. As Prof. Crouch and I have tried to educate, the business of business has matured into a science

            Did either of you explain when this happened?

          3. “The entire purpose of modern socisty is exrpressed EITHER in business or pleasure – in the Useful Arts or the Fine Arts.”

            Made that up yourself did ya?

            1. “Simple set theory..?”

              Um no re re. I’m talking about what I quoted. Which I will requote for you.

              ““The entire purpose of modern socisty is exrpressed EITHER in business or pleasure – in the Useful Arts or the Fine Arts.””

              ^ your previous statement repeated for your dumarse.

              What I’m asking regarding that statement is: did you make up this description of the “entire purpose of modern society” yourself? And did you then assign the two categories you just made up to be “useful arts” and “fine arts” respectively? Or did you copy this description from some other re re? In other words I’m asking is this absurd description your creation or did you copy it from someone as retarded as yourself? I want to know the source of this particular part of your retardation.

              I note that I just helped you understand your own subjective dual-categoried “theory” the other day when I asked you if you thought everything humans did was separated into “useful arts” and “fine arts” respectively. I see now that your answer is “yes”. Even though that is ridiculous, even if we were using 1800’s terminology. I mean jebus son, where do theology, natural science (aka natural philosophy in the 1800’s terminology), political science (politicking in 1800’s terminology), warfare, etc. etc. fall into newly absurdly simplified absurd categories?

          4. ” He displays the vapid examiner characteristic of looking for a mere key word, not realizing that ALL the categories he did find engage in business.”

            In other words, your entire argument for “business methods” being patent eligible is nothing but a big ol argument ad absurdum. A joke.

            Huge surprise. Really.

            1. “No 6 – your spin is not needed. Just use the words that I used.”

              My “spin”? There’s no need to “spin” what you’re asserting. You literally just stated that all the categories I found engage in business.

              Well of course they “engage in business”. But that isn’t what we’re discussing when we discuss “business methods” and the patent eligibility thereof. This you surely know, even as retrded as you are. So all this is just you trying to make us be talking about something which we are literally not talking about in order to implement an argument ad absurdum so as to attempt to mock what we’re actually talking about. Or you just do it to appear a fool. Whichever way.

              Surprise surprise. But at least now that you’ve confirmed it for us we can go ahead and dismiss you out of hand just like we did the last person making this “argument” that “everything’s business (or replace this with your new “all the old useful arts are business”) so therefor business method patents have to be patent eligible and always have been!”. AI was a big belieber in that argument ad absurdum. It’s absurd and can be dismissed out of hand simply because the person making the statement doesn’t even understand what is being discussed. Or they’re pretending not to when they do in fact understand.

            2. “That’s some pretty babble there 6, but you still can use my words without your spin.”

              In other words you’re super fond of your argument ad absurdum and even though it’ll never cut legal butter in a court room you’re married to it by now.

      4. I see nothing that fits in class 84’s definition in the claimed invention. The claimed invention is a method. Class 84 is for instruments. Not methods. It’s people like you that are so bad at classification that make the US classification system so bad.

        “CLASS 84, MUSIC

        SECTION I – CLASS DEFINITION

        This class includes the instruments used in producing music and includes (1) electrical music instruments, (2) automatic instruments, and (3) those hand played. The automatic instruments and the hand played instruments have a parallel classification so far as seems practical, and in both the patents are divided in the usual way into four groups, stringed, wind, rigid vibrators, and membranes. Then follow details or features common to groups (1), (2), and (3). This class also includes some accessory devices generally recognized as belonging to the art or industry.”

        Do you see that definition? It limits the class to instruments and excludes methods. Bad classification, anon excels at it.

    2. just recite the new “configuration” that occurs when you’re playing it.

      I just configured the settings on my “smartphone” in a way that improved it, from my perspective, at least. Can I haz patent now? I don’t see where anybody described these exact settings. It’s a totally new machine, right? It must be. Because Monte Hall Experiment or something. Clearly it would be in everyone’s interest for me to patent this and sue the smartphone company.

      Also my disco band just recorded a new song called “Do the Patent Tonight (Junk Mix)”. In the process of making the recording, there was a two-second moment where all the band members moved our fingers in ways that were previously not disclosed. So I should be able to patent all recordings with noises made using those finger movements, right? Surely this is best for society as a whole. I mean, have you heard the music kids are making today? It stinks. Promote the progress, baby! Innovation today for better litigation tomorrow.

        1. Les, 103? If the examiner cannot find the note sequence in the prior art he must allow the claim?

          The problem is not that the claimed subject matter is obvious. The problem is that the differences are not related to structure or to material, but to subject matter which is not eligible: music.

          1. On (not so subtle) correction Ned:

            the problem is that the differences are not related to structure or to material or to function, or to any such Congress approved manner of writing claims, but to subject matter which is not eligible: music.

            Now – and this should be clear – the reason this is not eligible subject matter is NOT a category aspect of 101, but a utility aspect. No matter how much Malcolm tries to dissemble, the utility of this item is not the utility covered under patent law – utility tied to useful arts.

            Sound waves can be patents – see a whole art filed on ultrasonics.

            There was a guest poster a while back that addressed something that can also be used for the canard of music in patent law examples:

            Not even wrong. Paraphrasing Wolfgang Pauli.

            See link to patentlyo.com

            1. anon, I am sorry, but structure that is identical to structure in the prior art cannot be distinguished based on function.

              The fact that the PTO allows this after In re Swinehart is a problem, but historically it cannot be done.

              Regardless, if the “new” structure has new “utility,” then it is entirely eligible under 101. If the SC is going to nevertheless deny a patent on a basis other than 102/103/112, it owes us all a coherent explanation.

            2. Ned – you are inserting a strawman of identical structure – go back to the Grand Hall experiment – the two devices only started out with identical structure. Go back to Alappat the pre-software configured machine does not have the same exact structure of the post-software configured machine. Go back to Nazomi and the ITC case and see that the difference of adding the machine component of software means that there is no identical structure.

              Stop with the misdirections.

  3. Nobody could have predicted that Chrisopher Rudy is a patent attorney.

    Just another “little guy”, right? He’s struggling so hard to bring his awesome innovations to the world, all the while being constantly beaten and thwarted by Big Corp! Reminds me exactly of that guy David in the Holy Bible. Why won’t the PTO just give him the patent he so richly deserves? Smells like a conspiracy. Follow the money. Check out Lemley’s stock portfolio — you know he’s got thousands of shares in Bass Pro!

    Rudy also successfully patented a method of playing a harmonic on a stringed instrument, if you can believe that (complete junk, of course, if you know anything about playing stringed instruments — is anyone surprised the PTO was unable to find prior art and tank this garbage?). But apparently that wasn’t enough. Check out the claims to the audio recording of that harmonic that he also obtained (granted on Aug 23, 2011)!

    15. An article of manufacture comprising a tangible medium of expression in or on which a harmonic chime tone is recorded, which is rendered by a method for a player to render a harmonic comprising blah blah blah

    ROTFLMAO! I just made a copy of a song including such a harmonic and sold 10,000,000 copies on the Internet. Or did I? I don’t remember for sure which “member” of his body the Cuban player was using to make the harmonic when I recorded the song at Fidel’s birthday party ten years ago. Come get me, Rudy! LOL.

    What an amazingly broken patent system we have here. Heckuva job, PTO.

    1. “Nobody could have predicted that Chrisopher Rudy is a patent attorney.”

      And he wrote that claim 21 above? No wonder he’s prosecuting his own applications. He can’t possibly have any clients with (non)skills like those.

  4. It would appear that there are 101 issues here raised by the lack of clear structural limitations to the hook. In this instance, the issues that potentially implicate 101 are also those that implicate 103 and 112. That certainly can happen and there is nothing “wrong” when that happens. Junky claims fail under multiple sections of the patent statutes all the time. It just means that they are junky. The 101 issue in this claim (to the extent it is deemed to exist) could be easily fixed by amending the claim to more structurally describe the materials (plastic? glass?) actually tested by the inventor and shown to achieve the super awesome unpredictable results that merit a patent in view of the extremely close prior art in this case. Or the PTO could simply tank this junky claim (as it did) by relying on 103 and 112. [shrugs]

    To further understand the importance of the 101 analysis generally and how it might apply to a claim to an improved “fish hook”, we can “innovate” a different “discovery” and see how that would play out. Let’s see the “discovery” is that some aspect of fishing (say, the fisherman’s enjoyment of the experience) is “impacted” by the name given to the hook by the fisherman, i.e., the hook has a suitable name, wherein the name begins with a first letter chosen from the second half of the English alphabet and ends with a second letter chosen from the first half of the English alphabet, wherein the name includes at least one “M”.

    Now everyone should be able to see that we are deep into abstraction territory. 103 is pretty much worthless here unless you want to ignore the limitations regarding “the name” when performing the analysis (something that the statute expressly precludes, much to the dismay of the patent teabaggers and their cohorts in the faux-”principled” camp). My claim is also clear as day and totally enabled. This is the kind of junk claim (the claim I “innovated” sitting here at my computer without ever having made a fish hook) is exactly why we have eligibility considerations.

    1. What a lovely strawman Malcolm.

      However, if there truly is an impact by the name, your strawman falls apart.

      Then again, you already know this, given the fact that you have volunteered an admission against interests in knowing the controlling law to the exceptions to the printed matter doctrine – even as you continue to post with intellectual dishonesty by trying NOT to account for the exceptions and conflate situations where such exceptions to the judicial doctrine would be in play with those situations where the exceptions to the judicial doctrine would not be in play.

      1. if there truly is an impact by the name, your strawman falls apart.

        Really? How exactly does one determine the “true impact” of assigning a new label to some old object, information or signal? Who’s perspective matters for that determination?

        Same question with putting words on a page, or images on a garbage bag or a toilet seat. When does “true impact” occur, who determines that, and what are the criteria?

        1. The mere assigning of a label is the strawman.

          If there is an impact (for instance, because of a functional relationship – i.e. the exceptions to the printed matter doctrine), then – clearly – your strawman fails.

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

          1. a functional relationship

            Is this “functional relationship” you refer to the same as the “true impact” you mentioned in your earlier comment? If so, you seem to be engaging some sort of circular argument with yourself.

            How is the “functional relationship” determined? What are the criteria? Who’s perspective is used to determine whether a “functional relationship” results from, e.g., an image affixed to an object or displayed on a screen; or a word printed on a page; or music recorded on a medium; or a label given to some number?

            Please tell everyone where in the patent statute you find this business about “functional relationships” and where the Supreme Court has construed that part of the statute and described the “functional” determination criteria you seem to be relying on.

            Or are you merely approving of some otherwise Super Dooper Objectionable judge-made “law” just because it happens to work in a patent-friendly direction?

            1. You do keep on trying to ignore established controlling law, do you not Malcolm?

              As mentioned – this is an established exception TO the judicial doctrine of printed matter. This is less something needing explicit writing (the actual explicit words are ANY and MANUFACTURE, by the way – so to answer your question of “Please tell everyone where in the patent statute” – 35 USC 101), and simply a note saying that the judicially created doctrine rightfully does not reach.

              How do you like them apples?

            2. You do keep on trying to ignore established controlling law, do you not Malcolm?

              Not at all. Just trying to get you to use your brain for a change and recite some other script besides “the statute tells you everything in black and white.” It doesn’t work that way, even for you. That’s why we have judges. And that’s why we have policy discussions (which you abhor because the only policy that matters to you is More Patents, Easier to Enforce, All the Time).

              a note saying that the judicially created doctrine rightfully does not reach

              You should show up with that note at the upcoming Supreme Court arguments. Just like Epstein used to do in that show you love so much. I seem to recall that his mother wrote them.

              Seriously, unless you believe the “judicially created” printed matter exception to reading claims as a whole under 103 is some sort of horrific event at least as awful as any of the other “judicially created” 101 exceptions (something the teabaggers never seem to argue, for some mysterious reason), then much “more than a note” is needed to clawback matter that fails 103 according to the doctrine. So which is it?

              This is your chance to be consistent. You guys have to start sometime or it’s going to become increasingly difficult to take you seriously when you cry about the Supreme Court not adhering to your precious “principles”.

            3. Malcolm,

              If you have the law, pound the law.
              If you have the facts, pound the facts.

              You NEVER pound these things – all that you ever do is pound the table of policy.

              So yes – AT ALL – you refuse to even acknowledge that you once acknowledged knowing the controlling law. And you do this because you have such a limited script and facing the fact that your script is intellectually dishonest, that is does not comport with either fact nor law would leave you with one (very bitter) avenue left: acceptance.

              Your last rambling of something 103-claw-101 is not parse able – try again.

    2. MM, the legal problem is that “enjoyment” is not an effect within useful Arts. The notion of “abstractness” come from Morse, “principle in the abstract.” Abstractness is overcome by applying the principle to a useful application.

      Now one cannot bicker that doing something physical to produce enjoyment is useful, it is just that the utility is not one that is within the useful Arts.

      Benson held that Math was excluded subject matter – like a law of nature. As such, the math cannot be claimed in such a way that it was effectively preempted. With excluded subject matter, the form of the claim is not important only whether enough additional, eligible subject matter has been added such that the claim is not effectively directed to the exclusive the matter.

      With subject matter that is not excluded however, any practical application eliminates its “abstractness.” It is no longer excludable on the basis of a abstractness. If it excludable it must be on the basis that the claimed subject matter is not within the useful arts.

      This underlines the critical hole in the Bilski opinion that relied on Rader’s opinion in the underlying case – that the subject matter of the claims in that case were abstract. I think the only basis for really justifying the result in that case was not abstractness, but excludable subject matter. And if it was excludable, why?

      Obviously, the Stevens concurrence had it right.

      1. Obviously, the Stevens concurrence had it right.

        Except for the fact that is did not, right Ned?

        And you know why – because the explicit words of Congress would have needed to have been rewritten by a branch of the government that did not have the constitutional authority to explicitly rewrite patent law.

        Seriously Ned – do you think it not scurrilous to constantly repeat something you know to be wrong?

  5. The above claim attempts to distinguish the prior art by a purely negative limitation description of the prior art – “not being a fishing lure to include a fishing lure in imitation of an insect or part of an insect to include an insect body.” Assuming there is no specification support for that negative limitation, why is that not a 112 problem that should have been raised by the PTO?

    1. Assuming there is no specification support for that negative limitation, why is that not a 112 problem that should have been raised by the PTO?

      It is a 112 problem, if your assumption is correct.

    2. “why is that not a 112 problem that should have been raised by the PTO?”

      You seem to forget that even the crack storm-examiners at the PTO don’t even know what 112 1st is, much less when to apply it. Or to keep an eye out for it.

      Seriously, you don’t understand the internal mentality. 112 1st just isn’t on most examiner’s minds. At all.

  6. 101 deals with excluded subject matter, such as laws of nature, etc. Here, the form of the claim is inconsequential if it preempts excluded subject matter.

    A claim that claims its subject matter via properties and effects is functional. It is invalid under 112(a) and (b).

    Hopefully, the SC fixes this confusion.

    In this case, the claim is functional.

    1. Also, in my humble opinion, the claims and Alice v. CLS Bank are not abstract. They are in valid under section 101 only if the subject matter they are claiming is excluded.

      What are excluded? Laws of nature, product nature, and, per Benson, mathematics. The holding in Bilski is unclear, but arguably that case also held that “fundamental economic principles” are excluded.

      If we are not dealing with subject matter clearly excluded, we are dealing with a functional claim that is invalid under section 112.

      I think the Supreme Court owes us a duty to tell us why subject matter is excluded if it is deemed excluded. Laws of nature and products of nature have been explained. The some degree Math has been explained. But the Supreme Court has yet to articulate a legal basis for excluding “fundamental economic principles.”

      1. Just in case you haven’t read Morse recently, read it again. The statutory basis for holding the claims invalid in that case was not the analog of 101, but the analog of 112.

    2. The hook is made of translucent material which is a feature of composition and implies the use of a group of materials that have that property.

      The hook also has to incorporate dye or pigment colourants to impart the required colour properties.

      Neither of these limitations amounts to a law of nature. The law of nature defines what things the fish might bite, and the hook is a practical application of that principle.

      Of course there is a lot we do not know. What translucent materials can be used for the proposed fish hook, and what mechanical properties do they need to posess in order to withstand the mechanical forces involved in landing the fish? Is the hook to be of glass or plastics? If plastics, which of the various transparent plastics are to be used? What are the appropriate dyes or pigments and in detail what colours or range of colours should be employed? Red, orange, yellow, green, blue and purple each cover an immense range of colours and it cannot be guaranteed that all shades of red will serve. The point becomes especially compelling if no particular shade is identified which will work.

      What species of fish are we aiming to catch?

      Are there details of the construction, materials and dye/pigment to enable any particular species of fish to be caught and if so what fish?

      I have my strong doubts that Mr Rudy has supplied any such information or that he has ever made or used a hook in accordance with his invention. If there is any evidence that his hooks are any better than conventional ones, that evidence was certainly not before the court at the oral hearing.

      None of this, though, takes away the principle that his is a new manufacture, and preemption is of low relevance.

      1. and preemption is of low relevance.

        Other than the fact that for whatever is claimed, for any claim – for ALL claims is preempted.

        That is what claims do.

    3. And in other news,

      Water is still wet,
      windmills continue to tilt,
      the merry-go-round continues to go around,
      and Ned Heller is off in the weeds, being wrong about the law.

  7. Did I go wrong on the 101 analysis above?

    1) We have a natural phenomenon that a fish’s preference for biting a fishing-hook is impacted by whether the hook is translucent and colored.
    2) Rudy claims a non-insect-shaped fish-hook that is translucent and colored.
    3) Following the USPTO’s guidelines (link to uspto.gov), it appears that the claims fail under 101.

    1. Did you go wrong? You have not supplied enough information to tell.

      From the flow chart,

      Decision Block 1: (Yes) path

      Decision Block 2: (Yes) path – given that the building blocks of ALL claims will (nay must involve at some level (See warning in Prometheus about the evisceration of patent law), I would love for anyone to list something that would generate a (No) path.

      Decision Block 3: Not ascertainable – What the F does “significantly different” mean?

      Balance.. (who makes the call on balance? is this like a prima facie case? is there burden shifting?)
      Totality… (totality indicates ‘all,’ yet no clue given as to how one determines ‘all.’)
      Weighing… (how is the weighing done? May one factor outweight another? a multitude?)
      Relevant… (how does one deterine relevance? Are there degrees of relevance?)
      Factors… (why these factors? are there any others?)

      Where is any of the law written to determine at what point “significantly different” is obtained? (note that this is a different question as to whether something is effectively the same, since sameness to something you have is ascertainable).

      In the immediate instance, why does it ‘appear’ that the claims fail?

      A HUGE problem is what exactly defines the judicial exception.

      One can have the nonsense 6 approach (that ends up merely mirroring the fact that a claim is naturally covers fully whatever the claim covers – the any rung on the ladder of abstraction is an abstraction view), or one can be strict and hold that the judicial exception can only be the top rung on the ladder of abstraction – problematic in itself since this necessarily implies that the identified judicial exception can NOT itself be abstracted to any high level of abstraction – mandating that there is no (can be no) further innovation on that identified item.

    2. I think you’re correct, because the claim is to the improvement, thus the claim is to “comprising where the hook is made of a suitable material, which permits transmittance of light therethrough and is colored a color, selected from the group consisting of red, orange, yellow, green, blue and purple, in nature.”

      “A suitable material which permits transmittance…and is colored a color…” is essentially abstract. I suspect those who disagree were attempting to incorrectly give patentable weight to the preamble.

      1. That’s a nother flaw – this ‘test’ mixes what is patent eligible with what is patentable, as improvement patents can now be deemed ‘ineligible’ on something that is itself eligible.

        Sheer nonsense.

        1. “That’s a nother flaw – this ‘test’ mixes what is patent eligible with what is patentable, as improvement patents can now be deemed ‘ineligible’ on something that is itself eligible.

          Sheer nonsense.”

          He’s using Jepson language. He is not claiming a fish hook. He is claiming making a modification. The modification is both obvious and drawn so broadly that it constitutes simply the abstract idea. It does fail under both 103 and 101. Of course, you understand why the office only proceeds under 103, since Jepson makes it so easy.

          1. He’s using Jepson language. He is not claiming a fish hook. He is claiming making a modification. The modification is both obvious and drawn so broadly that it constitutes simply the abstract idea. It does fail under both 103 and 101. Of course, you understand why the office only proceeds under 103, since Jepson makes it so easy.

            No doubt.

          2. Random Examiner,

            Go back to school. link to fishiplaw.com

            The modification is (no matter if the claim is Jepson or not) still pertains to a claim to a fishing hook. Just because the claim separates what is new from what is old does NOT negate what is old as being part of the claim – especially when it comes to a 101 category aspect.

            Examiner Mooney – you are invited to the class as well.

            1. “The modification is (no matter if the claim is Jepson or not) still pertains to a claim to a fishing hook. Just because the claim separates what is new from what is old does NOT negate what is old as being part of the claim – especially when it comes to a 101 category aspect.”

              That analysis is incomplete.

              The applicant views his invention as a modification to a fish hook. Does it nominally contain the fish hook? Of course it does. Does the addition of a fish hook means it surpasses the exception? No.

              Obviously the exception requires that a statutory class be present, as if there was no statutory class there would be no need for an exception, it would simply fail under 101 proper. You appear to be confusing it passing the statutory test of 101 with whether it passes the exception. That is incorrect, as it is a two-step approach.

              The courts have told us there is an exception (which is fact, regardless of your opinion on it). The fact that the applicant has separated the hook from the modification in Jepson language admits that he only views the modification as the only thing he contributed. The modification constitutes nothing more than the abstract idea.

              If what you were saying is true, one could simply claim a mathematical equation, add “a pencil to write it down with” and claim it as a system and that logic would say that it passes 101 because the pencil is obviously 101 eligible. The courts have rejected the view going as far back as Morse (though since you don’t like Morse, Bilski claimed a method, which is a statutory class, yet was still found wanting in 101).

              I suspect if he had claimed a method that said “casting a fish hook in accordance with [parabolic equation]” most would find that a method that follows an abstract idea/law of nature, even though it nominally contains a fish hook. This is actually no different, it just uses a different abstract idea.

            2. It is you that is confused and bamboozled.

              The claim – as a whole – is to a fishhook. A certain type of fishook to be certain, but to a fishhook nonetheless.

              Geesh – Malcolm just made a big deal that a recent case purported to be dealing with a machine made the machine disappear (he scoffed that no one would dare think that way) – and here you are, thinking exactly that way, with Malcolm cheerleading you on.

            3. Clearly [pun intended] his modification is integrated into the claim as a whole.

              Your lack of understanding of what a Jepson claim means is also transparent.

            4. “Clearly [pun intended] his modification is integrated into the claim as a whole.”

              You’re trying to treat a Jepson claim as if it is no different from any other claim. A Jepson claim makes an admission as to what the applicant is adding. There is a qualitative difference between claiming in and out of Jepson form. When that addition is only an abstract idea, the invention is abstract. You again argue that because the claim nominally contains a fish hook that it surpasses the exception. The fish hook only answers the 101 proper question. We are in agreement that it passes 101 proper, that’s why we’re talking about the exceptions.

              Again, you cannot claim an abstract idea by putting it into a system that nominally has a machine in it. The courts have consistently applied the exception even when the 101 proper rule is met. Your failure to engage on that issue is telling, as you would say.

            5. You’re trying to treat a Jepson claim as if it is no different from any other claim

              To the extent that a claim is treated under 101 – precisely – and I am precisely correct.

              That is rather the point that you are missing.

              And you are completely wrong about ignoring the old-in-the-arts part of the claim. See Diehr.

            6. It is telling that you miss this and telling that you think that Jepson claim cannot be integrated in the sense that Proemtheus dictates.

              You are making the same same fatal flaw that Malcolm does with his B@ [oldsteps]+[newthought] pet theory – a dissociation and forced non-integration of claim terms.

              That is NOT how a Jepson claim is read for 101 purposes.

      2. RandomGuy,

        Functional at the point of novelty — claiming the material by its properties and effects.

        Indefinite as well.

        As well, are we to now understand that the shorthand “abstract” is the same thing as a “principle in the abstract?” If so, the bandied word only means the claim is too broad, not definite, not enabled, etc. It does not mean the “subject matter” is excluded. As such, placing such a case in 101 that deals with exclusions is simply wrong.

        1. “Functional at the point of novelty — claiming the material by its properties and effects.”

          I didn’t read the spec, but I don’t think his intention is to claim a novel material. I think he’s claiming any old material being used for a fish hook, which would make it proper functional language, but under KSR would certainly be obvious.

          “As well, are we to now understand that the shorthand “abstract” is the same thing as a “principle in the abstract?” If so, the bandied word only means the claim is too broad, not definite, not enabled, etc. It does not mean the “subject matter” is excluded. As such, placing such a case in 101 that deals with exclusions is simply wrong.”

          Lacking a good test for abstract, the way I would look at is (since it clearly can’t turn on the drafter’s skill) would be to see if I could describe the same scope by using purely abstract language. If I can, I call it abstract. This claim isn’t to a fishhook, it’s a claim to modification via any translucent, colored structure for the purpose of making it more desirable to fish. What’s desirable to fish wasn’t his invention, and a claim to using what’s desirable to fish is completely non-limiting.

          1. Random Examiner – wrong again with “ but under KSR would certainly be obvious.” – there is simply not enough of an analysis present to make that bald statement.

            I think he’s claiming any old material being used for a fish hook

            Clearly [pun intended] not. Traditional fishing hooks being metal, metal does not “which permits transmittance of light therethrough” (unless you want to count the Star Trek IV move – The Voyage Home (1986) and the invention of transparent aluminum…

            /facepalm

            1. Traditional fishing hooks being metal

              Including the transparent hooks in the prior art? I don’t think so.

              It’s funny how patent teabaggers like anon can’t stop fluffin’ the junkiest junk patents. It’s like any other bad habit.

            2. Mea culpa- I missed that prior art in correcting the other obvious mistakes.

              Obviously then, this impacts the 102/103 analysis. But this does not excuse the shoddy 101 and other mistakes rampant here.

            3. this does not excuse the shoddy 101 and other mistakes rampant here.

              The PTO didn’t make the “shoddy 101″. Dennis made the shoddy 101 rejection and I agree with others who found Dennis’ analysis similarly shoddy (and unnecessary).

              Does the PTO make shoddy 101 rejections? Probably. They make all kinds of shoddy rejections every day. But I’d much rather that they make some shoddy rejections than to not make any rejection at all when it comes to claims as junky as this fishhook claim. I’ll leave it to you to worry about “why” I and nearly everyone else on earth feels this way.

              I already outlined a typical example of a related claim that begs for a 101 rejection and is very often ignored by the PTO simply because the claim “looks narrow.”

            4. Another Malcolm facepalm: “and I agree with others who found Dennis’ analysis similarly shoddy

              In other words, you agree with me, since I was the first to so note the shoddiness.

              Thanks. Why didn’t you just say so?

          2. Random, I think you miss my point.

            101 is about “exclusions.”
            – laws of nature;
            – products of nature;
            – mathematical algorithms.

            With exclusions even if the claim is to a nominal application, one looks to see if that is “conventional” in the nature of Prometheus, or the only practical use as in Benson.

            When the principle is NOT EXCLUDED, the question is not a matter of 101, but of 102/103/112. The statutory basis for Morse “principle in the abstract/useful application” was entirely based on 112. Calling something abstract, then, is effectively calling it functional.

            Thus if one claims a practical application of excluded subject matter, there must be invention besides the excluded subject matter: Funk Bros., Flook, Prometheus.

            The nominal basis for Bilski was “abstract,” meaning functional. But it applied the rationale of “exclusion” to declare the claims ineligible. Implicitly, the court must have found “fundamental economic principles” excluded. But it declared that it was not operating on the basis of excluded subject matter, but on the basis of abstract.

            Bilski, therefor, is all screwed up. Really. It did not follow Morse. It did not follow Benson. It did not follow Flook. It did not follow any of these cases despite saying that did follow them.

            Abstract and excluded subject matter are not the same thing. I must say, I find myself in full agreement with Alice’s brief on this score.

            Let me reiterate, a programmed computer (algorithm disclosed) is fully enabled and not abstract. You and I differ on this. If we are going to exclude such subject matter based on 101, it must be because the programmed computer is not doing something that is within the useful Arts, or because what it is doing is excluded.

            The court in Alappat was careful to note that the claimed rasterizer produced a useful, concrete and tangible result — and indeed it was all of these things. It was not abstract.

            In contrast, the claims in State Street Bank produced an improved price. The programming was enabled, and thus the claimed subject matter was not abstract.

            But was it within useful Arts? Is an old apparatus programmed to produce subject matter that is not within the useful Art eligible?

            But Bilski disclaimed any intention of saying things like price or risk or the like were not within the useful Arts. So, by the majority’s own reasoning, its should not have reached the result it did.

          3. Random, observe also that Morse became the doctrine of functionality, functional at the point of novelty. The statutory basis for this doctrine was and remains 112, not 101.

        2. “claiming the material by its properties and effects.”

          That’s pretty routine Ned and I’m pretty sure we can allow it so long as they demonstrate to us possession of the materials that they’re talking about.

    3. Did I go wrong on the 101 analysis above?

      As you noted, the invention describes a conventional hook with one difference: “the hook is made of a suitable material, which permits transmittance of light therethrough and is colored a color, selected from the group consisting of red, orange, yellow, green, blue and purple, in nature.”

      The 103 problem is that “transparent” and non-transparent hooks were already known and Rudy has failed to provide any convincing evidence that these “intermediate” hooks yield improved non-predictable results. I wonder how many time in his papers Rudy has ever made the tired, vapid argument that “if it was so obvious, how come nobody ever did it before”?

      As for your 101 analysis, it strikes me as very silly and looks more representative of the “I was born yesterday” 101 analyses that certain folks resort to when they argue that “everything is ineligible in view of Mayo!” But let’s take a closer look because this claim is certainly very junky and perhaps your analysis just needs to be fleshed out a bit.

      You begin with this point: We have a natural phenomenon that a fish’s preference for biting a fishing-hook is impacted by whether the hook is translucent and colored.

      For the sake of argument, let’s assume this is a bona fide “phenomenon” (in fact, “a fish’s preference for biting a fish-hook” is certainly “impactable” by the size, texture, shape, color/pattern, level of transparency, flavor, electrical conductivity and other factors, of which 99.999% of the variations are prima facie obvious to every reasonable person on Earth in view of thousands of years of fishing and an equal number of lengthy books regarding same — including many in English).

      For 101 purposes, the issue is whether this “phenomenon” of “fish prefer translucent hooks” is impermissibly locked up by the claim. First, I would look at whether the claim prevents people in the prior art from merely thinking about the phenomenon, as in Mayo. The answer here is: it doesn’t. It’s not a method claim and it’s not being claimed using method steps (as many computer-implemented junk “manufactures” are claimed). Immediately things are looking way better for the patentee (from a 101 perspective).

      Next, I’d look at whether this manufacture is described in sufficiently structural terms. Here’s the limitation again: the hook is made of a suitable material, which permits transmittance of light therethrough and is colored a color, selected from the group consisting of red, orange, yellow, green, blue and purple, in nature.

      Everyone should quickly recognize the problem here. No material is recited, only its desired property. The inventor wants us to believe that he has made some great discovery that applies to all materials with these properties. How many such materials has he tested and where is the data? What level of “translucency”? How are such levels of translucency achieved with all the materials covered by this claim? (note: this part of the analysis absent from your analysis, Dennis).

      It would appear that there are 101 issues here raised by the lack of clear structural limitations. In this instance, the issues that implicate 101 are also those that implicate 103 and 112. That certainly can happen and there is nothing “wrong” when that happens. Junky claims fail under multiple sections of the patent statutes all the time. It just means that they are junky. The 101 issue in this claim here could be easily fixed by amending the claim to more structurally describe the materials (plastic? glass?) actually tested by the inventor and shown to achieve the super awesome unpredictable results that merit a patent in view of the extremely close prior art in this case. Or the PTO could simply tank this junky claim (as it did) by relying on 103 and 112. [shrugs]

      To further understand the importance of the 101 analysis generally, we can “innovate” a different “discovery” and see how that would play out. Let’s see the “discovery” is that some aspect of fishing (say, the fisherman’s enjoyment of the experience) is “impacted” by the name given to the hook by the fisherman, i.e., the hook is given a suitable name, wherein the name begins with a first letter chosen from the second half of the English alphabet and ends with a second letter chosen from the first half of the English alphabet, wherein the name includes at least one “M”

      Now everyone should be able to see that we are deep into abstraction territory. 103 is pretty much worthless here unless you want to ignore the limitations regarding the name when performing the analysis (something that the statute expressly precludes, much to the dismay of the patent teabaggers and their cohorts in the faux-“principled” camp). My claim is also clear as day and totally enabled. This is the kind of junk claim (the claim I “innovated” sitting here at my computer without ever having made a fish hook) is exactly why we have eligibility considerations.

      1. Massive ASSumption: “and other factors, of which 99.999% of the variations are prima facie obvious to every reasonable person on Earth in view of thousands of years of fishing

        You do not get to simply make the conclusory statement as de facto prima facie.

        That is simply not how examination works.

        Any semblance to using legal thinking in any type of 101 analysis somewhere buried in the schlock of Malcolm’s QQ fest is purely coincidental.

    4. “Did I go wrong on the 101 analysis above?

      1) We have a natural phenomenon that a fish’s preference for biting a fishing-hook is impacted by whether the hook is translucent and colored.
      2) Rudy claims a non-insect-shaped fish-hook that is translucent and colored.
      3) Following the USPTO’s guidelines (link to uspto.gov), it appears that the claims fail under 101.”

      Yes you did D. First of all, you forgot the “limitation” on the exclusions in Diehr. Fishing hooks are long a traditional useful art that has enjoyed patent protection for like hundreds of years. They’re not excluded brosef. And he’s not trying to claim the thing in abstract terms, just in terms of the material. All of that would be your first clue.

      Moreover, and more importantly, he’s not attempting to claim the natural phenomena of a fish’s preference for biting a fishing-hook. Sorry he just isn’t, and you’ll be in agreement when you think that through a bit more. He’s just trying to claim a fishing hook.

      “2) Rudy claims a non-insect-shaped fish-hook that is translucent and colored.”

      K?

      “3) Following the USPTO’s guidelines (link to uspto.gov), it appears that the claims fail under 101.”

      That should just be another indication to you that the PTO’s guidelines are wrong. But I’d say you’re probably just doing the guidelines wrong. Even though they are wrong and lead to the wrong determination at least 50% of the time.

  8. In reading the claims, you might think that this is an abstract idea case since the invention is based upon the law of nature or abstract idea that the translucence and color of a fishing hook correlate with a fish’s proclivity to bite and, although the patent does claim a physical hook, that application merely uses well known technology in a way that basically occupies the same space as the abstraction itself.

    Ah, the lure of the abstract idea reasoning … anything can be reduced to an abstract idea with enough imagination.

    The only question now is what imagination will MM employ to hijack this thread and start discussing “junk” software patents.

    1. That’s a lot of imagination The Critic to think that Malcolm employs any imagination in his typical hijacks. I think that even less effort is involved for Malcolm than the effort required to obtain publication after filing a PCT application.

  9. So, I guess a question is how many fishing lures would infringe this? And, how much money has he spent on this to date?

  10. A fishing hook indisputably qualifies under 35 USC 101 as a manufacture. It would have been so regarded under the old UK law under the Statute of Monopolies from which the word “manufacture” was taken. The fact that it was of translucent material and coloured makes no difference.

    Owing to the unusual nature of the factual background I listened to the oral argument which is available on the Federal Vircuit website. One of the judges asked what is the surprising or unusual result that flows from the claimed features, an approach that I have advocated on many ocasions on this blog and elsewhere. Mr Rudy was unable to give any effective answer, after which the fate of his appeal was sealed.

    The outcome was a Rule 36 judgment, no opinion being considered necessary. It is not clear how Rudy can or should return to the USPTO, and res judicata should surely apply. Over in UK we say interest civitas est ut sit finis litium (litigation must result in finality).

    1. Dennis and Paul, thanks for a fun case.

      I am wondering whether one even needs to go looking for surprise or a result that is “unusual”. Why couldn’t the judge simply ask Mr Rudy “what difference does it make” when all the features of the claim are present in combination (as opposed to when, as in the prior art, one feature or another of the claimed feature combination is missing)?

      This then begs the next question: If Mr Rudy had presented comparative data, revealing a better result with the claimed combination than one gets with any sub-combination falling short of the claimed combination, what could then have stopped his sailing through to issue?

      Shades of EPO-PSA and the often decisive difference between an unpatentable mere alternative and a (patentable) performance enhancer.

      What by the way is meant by “insufficiently anecdotal” to overcome the prior art? When do Affidavits become sufficiently “anecdotal” to succeed, I ask myself.

      1. Unless there are allowable claims remaining in an application appealed to the CAFC, an affirmance with no further instructions would mean that the application would go abandoned as of the date of the CAFC mandate. See MPEP 706.07(h)(XII) and MPEP 1216.01(I)(A).

  11. In reading the claims, you might think that this is an abstract idea case since the invention is based upon the law of nature or abstract idea that the translucence and color of a fishing hook correlate with a fish’s proclivity to bite and, although the patent does claim a physical hook, that application merely uses well known technology in a way that basically occupies the same space as the abstraction itself.

    Classic Dennis!

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